1211.01(b)    Surname Combined with Additional Matter

Often a mark will be comprised of a word that, standing by itself, would be primarily merely a surname, coupled with additional matter (e.g., letters, words, or designs). The question remains whether the mark sought to be registered as a whole would be perceived by the public primarily merely as a surname. In re Hutchinson Tech. Inc., 852 F.2d 552, 554, 7 USPQ2d 1490, 1492 (Fed. Cir. 1988). See TMEP §§1211.01(b)(i)–1211.01(b)(viii) for additional information about surnames combined with additional matter.

1211.01(b)(i)    Double Surnames

A combination of two surnames is not primarily merely a surname, within the meaning of §2(e)(4), unless there is evidence of record showing that the combination would be perceived by the public primarily merely as a surname. See In re Standard Elektrik Lorenz A.G., 371 F.2d 870, 873, 152 USPQ 563, 566 (C.C.P.A. 1967) (holding SCHAUB-LORENZ not primarily merely a surname, the Court noting that there was no evidence submitted that the mark sought to be registered was primarily merely a surname; that the only evidence of surname significance related to the individual "SCHAUB" and "LORENZ" portions of the mark; and that the mark must be considered in its entirety rather than dissected).

1211.01(b)(ii)    Stylization or Design Elements

A mark comprised of a word that, standing by itself, would be considered primarily merely a surname, but which is coupled with a distinctive stylization or design element, is not considered primarily merely a surname. In re Benthin Mgmt. GmbH, 37 USPQ2d 1332, 1334 (TTAB 1995) (finding stylized display of term BENTHIN to be a factor weighing against a finding that the term would be perceived as primarily merely a surname). However, the addition of a nondistinctive design element or stylization to a term that, standing by itself, is primarily merely a surname does not remove the term from that category. The primary significance of the mark, in its entirety, would be merely that of a surname. See In re Pickett Hotel Co., 229 USPQ 760, 763 (TTAB 1986) (holding PICKETT SUITE HOTEL primarily merely a surname despite the stylization of the lettering, which was considered "insignificant, in that it is clearly not so distinctive as to create any separate commercial impression in the minds of purchasers of appellant’s services").

The display of a term in lower-case lettering does not detract from its surname significance. In re Directional Mktg. Corp., 204 USPQ 675, 677 (TTAB 1979).

1211.01(b)(iii)    Surname Combined with Initials

A mark that consists of two or more initials preceding a surname will typically convey the commercial impression of a personal name and thus generally will not be primarily merely a surname. In re P.J. Fitzpatrick, 95 USPQ2d 1412, 1414 (TTAB 2010) (holding that the initials P.J. coupled with surname Fitzpatrick would be perceived as a given name and thus comprises an entire personal name, not merely a surname); see In re Yeley, 85 USPQ2d 1150, 1153 (TTAB 2007) (holding that the proposed mark J.J. YELEY was recognized as the full name of the well known NASCAR race driver and as such was perceived as a reference to a particular person and not primarily merely a surname); Michael S. Sachs Inc. v. Cordon Art B.V., 56 USPQ2d 1132, 1136 (TTAB 2000) (finding that the primary significance of M.C. ESCHER was that of a famous deceased Dutch artist, commenting that "[t]he mark M.C. ESCHER would no more be perceived as primarily merely a surname than the personal names P.T. Barnum, T.S. Eliot, O.J. Simpson, I.M. Pei and Y.A. Tittle.").

Although marks consisting of a single initial preceding a surname have been held to be primarily merely a surname, In re I. Lewis Cigar Mfg. Co., 205 F.2d 204, 98 USPQ 265 (C.C.P.A. 1953), the Board has noted that no per se rule exists that a single initial preceding a surname must be deemed primarily merely a surname. P.J. Fitzpatrick, 95 USPQ2d at 1413. The Board further opined that such a mark would not be perceived as primarily merely a surname where the record shows that the addition of a single initial to a surname creates the commercial impression of a personal name. Id. Therefore, applicants may attempt to overcome a surname refusal as to a mark consisting of a single initial preceding a surname by submitting evidence that the mark would likely be perceived as a personal name. For example, an applicant may provide evidence that consumers in general perceive a single initial preceding a surname as a personal name. Or, an applicant may show that such a mark is the name of an individual, such as the applicant or a signatory of the applicant, and evidence shows it would be recognized as such by the consuming public. In addition, if the applicant indicates that the name in the mark is that of a particular living individual, the applicant must provide written consent to register the mark from this individual. See TMEP §§813, 813.01(a), 1206.04(a). However, when the name in the mark is identical to the name of the applicant or of a signer of the application (e.g., the mark is A. JONES and the applicant’s name or signatory is A. Jones), consent is not necessary. In such cases, consent is presumed, but the examining attorney must ensure that a consent statement is entered into the Trademark database. See TMEP §§813, 813.01(a), and 1206.04(b).

1211.01(b)(iv)    Surname Combined with Title

A title, such as "Mr.," "Mrs.," "Mlle.," "Dr.," or "MD," does not diminish the surname significance of a term; rather, it may enhance the surname significance of a term. In re Rath, 402 F.3d 1207, 74 USPQ2d 1174 (Fed. Cir. 2005) (affirming Board decision holding that DR. RATH was primarily merely a surname); In re Giger, 78 USPQ2d 1405 (TTAB 2006) (holding GIGER MD primarily merely a surname); In re Revillon, 154 USPQ 494 (TTAB 1967) (holding MLLE. REVILLON primarily merely a surname); cf. In re Hilton Hotels Corp., 166 USPQ 216, 217 (TTAB 1970) (holding LADY HILTON not primarily merely a surname because it suggests a person or lady of nobility).

1211.01(b)(v)    Surname in Plural or Possessive Form

The surname significance of a term is not diminished by the fact that the term is presented in its plural or possessive form. See In re Binion, 93 USPQ2d 1531 (TTAB 2009) (holding BINION and BINION’S primarily merely a surname); In re Woolley’s Petite Suites, 18 USPQ2d 1810 (TTAB 1991) (holding WOOLLEY’S PETITE SUITES for hotel and motel services primarily merely a surname); In re McDonald’s Corp., 230 USPQ 304, 306 (TTAB 1986) (holding MCDONALD’S primarily merely a surname based on a showing of surname significance of "McDonald," the Board noting that "it is clear that people use their surnames in possessive and plural forms to identify their businesses or trades"); In re Luis Caballero, S.A., 223 USPQ 355 (TTAB 1984) (holding BURDONS primarily merely a surname based in part on telephone listings showing surname significance of "Burdon"); In re Directional Mktg. Corp., 204 USPQ 675 (TTAB 1979) (holding DRUMMONDS primarily merely a surname based on a showing of surname significance of "Drummond").

1211.01(b)(vi)    Surname Combined with Wording

The treatment of marks that include wording in addition to a term that, standing by itself, is primarily merely a surname, depends on the significance of the non-surname wording.

If the wording combined with the surname is incapable of functioning as a mark (i.e., a generic name for the goods or services), the examining attorney must refuse registration on the ground that the entire mark is primarily merely a surname under §2(e)(4). If the policy were otherwise, one could evade §2(e)(4) by the easy expedient of adding the generic name of the goods or services to a word that is primarily merely a surname. See Mitchell Miller, P.C. v. Miller, 105 USPQ2d 1615 (TTAB 2013) (holding MILLER LAW GROUP for legal services primarily merely a surname); In re Hamilton Pharm. Ltd., 27 USPQ2d 1939 (TTAB 1993) (holding HAMILTON PHARMACEUTICALS for pharmaceutical products primarily merely a surname); In re Cazes, 21 USPQ2d 1796, 1797 (TTAB 1991) (holding BRASSERIE LIPP primarily merely a surname where "‘brasserie’ is a generic term for applicant’s restaurant services"); In re Woolley’s Petite Suites, 18 USPQ2d 1810 (TTAB 1991) (holding WOOLLEY’S PETITE SUITES for hotel and motel services primarily merely a surname); In re Possis Med., Inc., 230 USPQ 72, 73 (TTAB 1986) (holding POSSIS PERFUSION CUP primarily merely a surname, the Board finding that "[a]pplicant’s argument that PERFUSION CUP is not a generic name for its goods ... is contradicted by the evidence the Examining Attorney has pointed to"); In re E. Martinoni Co., 189 USPQ 589, 590-91 (TTAB 1975) (holding LIQUORE MARTINONI (stylized) for liqueur primarily merely a surname, with "liquore" being the Italian word for "liqueur").

If the wording combined with the surname is capable of functioning as a mark (i.e., matter that is arbitrary, suggestive, or merely descriptive of the goods or services), the mark is not considered to be primarily merely a surname under §2(e)(4). However, if the additional wording is merely descriptive or the equivalent, and a disclaimer is otherwise proper, the examining attorney must require a disclaimer of the additional wording. See In re Hutchinson Tech. Inc., 852 F.2d 552, 555, 7 USPQ2d 1490, 1493 (Fed. Cir. 1988) (holding HUTCHINSON TECHNOLOGY for computer components not primarily merely a surname when the mark is considered as a whole, the Court remanding the case for entry of a disclaimer of "TECHNOLOGY" before publication).

Some wording may enhance rather than diminish the surname significance of the mark. See In re Piano Factory Grp. Inc., 85 USPQ2d 1522, 1527 (TTAB 2006) (finding the addition of "& SONS" to the surname VOSE "serves only to emphasize or reinforce that ‘VOSE’ is the surname of the sons’ parents."), and cases cited therein. See also TMEP §1211.01(b)(iv) regarding surnames combined with titles, TMEP §1211.01(b)(iii) regarding surnames combined with initials, and TMEP §1211.01(b)(viii) regarding surnames combined with legal or familial business entity designations.

1211.01(b)(vii)    Surname Combined with Domain Name

A surname combined with a non-source-identifying top-level domain name (e.g., JOHNSON.COM) is primarily merely a surname under §2(e)(4). See TMEP §1215.03.

1211.01(b)(viii)    Surname Combined with Legal or Familial Entity Designation

The addition of wording that merely indicates the legal entity of an applicant, such as "Corporation," "Inc.," "Ltd.," "Company," or "Co.," or the family business structure of an applicant, such as "& Sons" or "Bros.," does not diminish the surname significance of a term that is otherwise primarily merely a surname. See In re I. Lewis Cigar Mfg. Co., 205 F.2d 204, 98 USPQ 265 (C.C.P.A. 1953) (holding S. SEIDENBERG & CO’S. primarily merely a surname); In re Piano Factory Grp, Inc., 85 USPQ2d 1522 (TTAB 2006) (holding VOSE & SONS primarily merely a surname). In fact, adding the familial entity designation "& SONS" to a surname was found to emphasize or reinforce the surname significance of the mark. Piano Factory Grp. Inc., 85 USPQ2d at 1527.