1211.01    "Primarily Merely a Surname"

The test for determining whether a mark is primarily merely a surname depends on the primary significance of the mark as a whole to the purchasing public. Earnhardt v. Kerry Earnhardt, Inc., 864 F.3d 1374, 1377, 123 USPQ2d 1411, 1413 (Fed. Cir. 2017); In re Hutchinson Tech. Inc., 852 F.2d 552, 554, 7 USPQ2d 1490, 1492 (Fed. Cir. 1988) ; In re tapio GmbH, 2020 USPQ2d 11387, at *8 (TTAB 2020). Thus, the impact the applied-for term has or would have on the purchasing public must be evaluated in determining whether the primary, and only, significance of the term is that of a surname. In re Eximius Coffee, LLC, 120 USPQ2d 1276, 1278 (TTAB 2016) (quoting In re Harris-Intertype Corp., 518 F.2d 629, 631, 186 USPQ 238, 239 (C.C.P.A. 1975)).

Each case must be decided on its own facts, based upon the evidence in the record. See In re Etablissements Darty et Fils, 759 F.2d 15, 17, 225 USPQ 652, 653 (Fed. Cir. 1985). There is no rule as to the kind or amount of evidence necessary to show that relevant consumers will perceive the applied-for mark as primarily merely a surname. In re Six Continents Ltd., 2022 USPQ2d 135, at *4 (TTAB 2022); In re tapio, 2020 USPQ2d 11387, at *8.

The Trademark Trial and Appeal Board has identified five examples of inquiries that may lead to evidence regarding the public’s perception of a term’s primary significance:

In re Colors in Optics, Ltd., 2020 USPQ2d 53784, at *1-2 (TTAB 2020) (citing In re Benthin Mgmt. GmbH, 37 USPQ2d 1332, 1333-34 (TTAB 1995)). Where the mark is in standard characters, it is unnecessary to consider the fifth inquiry. In re Yeley, 85 USPQ2d 1150, 1151 (TTAB 2007).

These inquiries are not exclusive and any of these circumstances, singly or in combination, as well as any other relevant circumstances, may be considered when making this determination. In re Six Continents Ltd., 2022 USPQ2d 135, at *54 (citing In re tapio GmbH, 2020 USPQ2d 11387, at *9; In re Olin Corp., 124 USPQ2d 1327, 1330 (TTAB 2017); Azeka Bldg. Corp. v. Azeka, 122 USPQ2d 1477, 1480 (TTAB 2017); In re Integrated Embedded, 120 USPQ2d 1504, 1506 n.4 (TTAB 2016)).

If there is any doubt as to whether a term is primarily merely a surname, the Board will resolve the doubt in favor of the applicant. In re Yeley, 85 USPQ2d at 1151; In re Benthin, 37 USPQ2d at 1334.

1211.01(a)    Non-Surname Significance

Often a word will have a meaning or significance in addition to its significance as a surname. The examining attorney must determine the primary meaning of the term to the public. Evidence that a term has no recognized meaning other than as a surname further supports a determination that its primary significance is as a surname. See In re Six Continents Ltd., 2022 USPQ2d 135, at *114 (TTAB 2022); In re tapio GmbH, 2020 USPQ2d 11387, at *11 (TTAB 2020); In re Eximius Coffee, LLC, 120 USPQ2d 1276, 1280 (TTAB 2016)); In re Isabella Fiore LLC, 75 USPQ2d 1564, 1566 (TTAB 2005).

1211.01(a)(i)    Ordinary Language Meaning

If there is a readily recognized meaning of a term, apart from its surname significance, such that the primary significance of the term is not that of a surname, registration should be granted on the Principal Register without evidence of acquired distinctiveness. See In re Isabella Fiore LLC, 75 USPQ2d 1564 (TTAB 2005) (holding FIORE not primarily merely a surname where it is also the Italian translation of the English word "flower" and the non-surname meaning is not obscure); In re United Distillers plc, 56 USPQ2d 1220 (TTAB 2000) (holding the relatively rare surname HACKLER not primarily merely a surname, in light of dictionary meaning); Fisher Radio Corp. v. Bird Elec. Corp., 162 USPQ 265 (TTAB 1969) (holding BIRD not primarily merely a surname despite surname significance); In re Hunt Elecs. Co., 155 USPQ 606 (TTAB 1967) (holding HUNT not primarily merely a surname despite surname significance).

However, this does not mean that an applicant only has to uncover a non-surname meaning of a term to obviate a refusal under §2(e)(4). See In re Nelson Souto Major Piquet, 5 USPQ2d 1367 (TTAB 1987) (holding N. PIQUET (stylized) primarily merely a surname despite significance of the term "piquet" as "the name of a relatively obscure card game"). The mere existence of other non-surname meanings of a term does not preclude a finding that the term is primarily merely a surname. Mitchell Miller, P.C. v. Miller, 105 USPQ2d 1615, 1621 (TTAB 2013) (holding MILLER LAW GROUP primarily merely a surname for legal services despite other meanings of the term "miller"). "The question is not whether a mark having surname significance might also have a non-surname significance, but whether, in the context of the goods or services at issue, that non-surname significance is the mark's primary significance to the purchasing public." Id.; see In re Harris-Intertype Corp., 518 F.2d 629, 631, 186 USPQ 238, 239 (C.C.P.A. 1975) .

1211.01(a)(ii)    Phonetic Equivalent of Term with Ordinary Language Meaning

A term may be primarily merely a surname even if it is the phonetic equivalent of a word that has an ordinary meaning (e.g., Byrne/burn; Knott/not or knot; Chappell/chapel). See In re Pickett Hotel Co., 229 USPQ 760 (TTAB 1986) (holding PICKETT SUITE HOTEL primarily merely a surname despite applicant’s argument that PICKETT is the phonetic equivalent of the word "picket"); cf. In re Monotype Corp. PLC, 14 USPQ2d 1070, 1071 (TTAB 1989) (holding CALISTO not primarily merely a surname, the Board characterizing the telephone directory evidence of surname significance as "minimal" and in noting the mythological significance of the name "Callisto," stating that it is common knowledge that there are variations in the rendering of mythological names transliterated from the Greek alphabet (distinguishing Pickett Hotel Co., 229 USPQ 760)). Similarly, the fact that a word that has surname significance is also a hybrid or derivative of another word having ordinary language meaning is insufficient to overcome the surname significance, unless the perception of non-surname significance would displace the primary surname impact of the word. See In re Etablissements Darty et Fils, 759 F.2d 15, 225 USPQ 652 (Fed. Cir. 1985) (holding DARTY primarily merely a surname despite applicant’s argument that the mark is a play on the word "dart"); In re Petrin Corp., 231 USPQ 902 (TTAB 1986) (holding PETRIN primarily merely a surname despite applicant’s argument that the mark represents an abbreviation of "petroleum" and "insulation").

1211.01(a)(iii)    Geographical Significance

A term with surname significance may not be primarily merely a surname if that term also has a well-known geographical meaning. In re Colt Indus. Operating Corp., 195 USPQ 75 (TTAB 1977) (holding FAIRBANKS not primarily merely a surname because the geographical significance of the mark was determined to be just as dominant as its surname significance). However, the fact that a term is shown to have some minor significance as a geographical term will not dissipate its primary significance as a surname. In re Hamilton Pharm. Ltd., 27 USPQ2d 1939 (TTAB 1993) (holding HAMILTON primarily merely a surname).

1211.01(a)(iv)    Historical Place or Person

A term with surname significance may not be primarily merely a surname if that term also identifies a historical place or person. See Lucien Piccard Watch Corp. v. Since 1868 Crescent Corp., 314 F. Supp. 329, 331, 165 USPQ 459, 461 (S.D.N.Y. 1970) (holding DA VINCI not primarily merely a surname because it primarily connotes Leonardo Da Vinci); In re Pyro-Spectaculars, Inc., 63 USPQ2d 2022, 2024 (TTAB 2002) (holding SOUSA for fireworks and production of events and shows featuring pyrotechnics not primarily merely a surname, where the evidence showed present-day recognition and continuing fame of John Philip Sousa as a composer of patriotic music, and the applicant’s goods and services were of a nature that "would be associated by potential purchasers with patriotic events such as the Fourth of July, patriotic figures, and patriotic music"); Michael S. Sachs Inc. v. Cordon Art B.V., 56 USPQ2d 1132, 1136 (TTAB 2000) (finding the primary significance of M. C. ESCHER to be that of a famous deceased Dutch artist); cf. In re Pickett Hotel Co., 229 USPQ 760, 762 (TTAB 1986) (holding PICKETT SUITE HOTEL primarily merely a surname despite applicant’s evidence that PICKETT was the name of a famous Civil War general); In re Champion Int’l Corp., 229 USPQ 550, 551 (TTAB 1985) (holding McKINLEY primarily merely a surname despite being the name of a deceased president).

Evidence that an individual is famous in a particular field does not necessarily establish that he or she is a historical figure. In re Binion, 93 USPQ2d 1531 (TTAB 2009) (holding BINION and BINION’S primarily merely a surname; although there was evidence that applicant had played a significant role in the gaming industry in Las Vegas, his notoriety was not deemed so remarkable or so significant that he is a historical figure); In re Thermo LabSystems Inc., 85 USPQ2d 1285 (TTAB 2007) (holding WATSON primarily merely a surname). Furthermore, the Board has held that a surname that would be evocative of numerous individuals, rather than one particular historical individual, does not qualify as a historical name and is merely a surname of numerous individuals with varying degree of historical significance. Id. at 1290.

1211.01(a)(v)    Rare Surnames

The rarity of a surname is a factor to be considered in determining whether a term is primarily merely a surname. In re Joint-Stock Co. "Baik," 84 USPQ2d 1921, 1924 (TTAB 2007) (finding the extreme rarity of BAIK weighed against surname refusal); In re Benthin Mgmt. GmbH, 37 USPQ2d 1332, 1333 (TTAB 1995) (finding the fact that BENTHIN was a rare surname to be a factor weighing against a finding that the term would be perceived as primarily merely a surname); In re Sava Research Corp., 32 USPQ2d 1380, 1381 (TTAB 1994) (finding SAVA not primarily merely a surname, where there was evidence that the term had other meaning, no evidence that the term was the surname of anyone connected with applicant, and the term’s use as a surname was very rare); In re Garan Inc., 3 USPQ2d 1537 (TTAB 1987) (holding GARAN not primarily merely a surname).

However, the fact that a surname is rare does not per se preclude a finding that a term is primarily merely a surname. Even a rare surname may be held primarily merely a surname if its primary significance to purchasers is that of a surname. See In re Etablissements Darty et Fils, 759 F.2d 15, 225 USPQ 652 (Fed. Cir. 1985) (holding DARTY primarily merely a surname); In re Olin Corp., 124 USPQ2d 1327, 1330-31 (TTAB 2017) ("‘The relevant question is not simply how frequently a surname appears, however, but whether the purchasing public for Applicant's [goods] is more likely to perceive Applicant's proposed mark as a surname rather than as anything else.’" (quoting In re Beds & Bars Ltd., 122 USPQ2d 1546, 1551 (TTAB 2017))); In re Rebo High Definition Studio Inc., 15 USPQ2d 1314 (TTAB 1990) (holding REBO primarily merely a surname); In re Pohang Iron & Steel Co., 230 USPQ 79 (TTAB 1986) (holding POSTEN primarily merely a surname). Regardless of the rarity of the surname, the test is whether the primary significance of the term to the purchasing public is that of a surname. See In re Adlon Brand GmbH & Co. KG, 120 USPQ2d 1717, 1721 (TTAB 2016) ("The issue to be determined under the statute is whether the public would perceive the surname significance as the proposed mark's primary significance, not whether the surname is rarely encountered.").

An issue to be considered in determining how rarely a term is used is the media attention or publicity accorded to public personalities who have the surname. In re Bed & Bars Ltd., 122 USPQ2d at 1551 ("[A]lthough BELUSHI is a rare surname in terms of the number of people in the U.S. with that name, it is anything but rare when we consider how many consumers have been exposed to it as a surname, often repeatedly, over the years"). A surname rarely appearing in birth records may nonetheless appear more routinely in news reports, so as to be broadly exposed to the general public. In re Gregory, 70 USPQ2d 1792, 1795 (TTAB 2004); cf. In re Eximius Coffee, LLC, 120 USPQ2d 1276, 1281 (TTAB 2016) .

1211.01(a)(vi)    "Structure and Pronunciation" of a Surname

Some names, by their very nature, have only surname significance even though they are rare surnames. See In re Industrie Pirelli Societa per Azioni, 9 USPQ2d 1564, 1566 (TTAB 1988) (holding PIRELLI primarily merely a surname, the Board stated that "certain rare surnames look like surnames and certain rare surnames do not and . . . ‘PIRELLI’ falls into the former category"); In re Petrin Corp., 231 USPQ 902, 904 (TTAB 1986) (holding PETRIN primarily merely a surname). Conversely, certain surnames are so rare that they do not even have the appearance of surnames. In such cases, even in the absence of non-surname significance, a reasonable application of the "primary significance to the purchasing public" test could result in a finding that the surname, when used as a mark, would be perceived as arbitrary or fanciful. In re United Distillers plc, 56 USPQ2d 1220, 1222 (TTAB 2000) (finding HACKLER does not have the look and feel of a surname); see also In re Joint-Stock Co. "Baik," 84 USPQ2d 1921, 1923 (TTAB 2007) (finding lack of other recognized meaning does not in itself imbue a mark with the "look and feel" of a surname).

Examining attorneys may submit evidence that the public would perceive a term to have surname significance due to its structure or pronunciation. In re Six Continents Ltd., 2022 USPQ2d 135, at *13 (TTAB 2022); In re Eximius Coffee, LLC, 120 USPQ2d 1276, 1280 (TTAB 2016). For example, the examining attorney may compare the mark at issue to other common surnames that are configured similarly and sound similar. In re tapio GmbH, 2020 USPQ2d 11387, at *12 (TTAB 2020) (citing In re Eximius Coffee, 120 USPQ2d at 1280)); see In re Six Continents Ltd., 2022 USPQ2d 135, at *13-15. In such cases, the examining attorney must provide evidence to show that the public would be likely to perceive the mark as a surname due to the similar structure and pronunciation, such as evidence that the terms to which the mark is being compared are common surnames to which the public has been exposed. In re Eximius Coffee, 120 USPQ2d at 1280; see also In re Bed & Bars Ltd., 122 USPQ2d 1546, 1551 (TTAB 2017) (Board noting that it would require evidence bearing on how members of the public would perceive the structure and sound of BELUSHI and whether they would be likely to perceive the proposed mark as similar or dissimilar in structure and sound to other surnames, common words, or coined terms); In re Adlon Brand GmbH & Co. KG, 120 USPQ2d 1717, 1724 (TTAB 2016) (noting that "[t]he mere sharing of a prefix, suffix or letter string does not result in the sort of structural similarity that is helpful to [the surname] analysis" and that arguments about surname structure and pronunciation "would require more objective evidence . . . of how members of the public would perceive the structure and sound of [the applied-for mark] and whether they would be likely to perceive it as similar to the structure and sound of other surnames, common words or coined terms").

1211.01(a)(vii)    Doctrine of Foreign Equivalents

In determining whether a term is primarily merely a surname, the examining attorney must consider whether the term has any meaning in a foreign language. This determination is made from the point of view of American buyers familiar with the foreign language. In re Isabella Fiore, LLC, 75 USPQ2d 1564 (TTAB 2005) (holding FIORE – the Italian equivalent of "Flower" – not primarily merely a surname).

The doctrine of foreign equivalents is not an absolute rule, but merely a guideline, which should be applied only when it is likely that the ordinary American purchaser would stop and translate the foreign word into its English equivalent. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1377, 73 USPQ2d 1689, 1696 (Fed. Cir. 2005). The "ordinary American purchaser" includes "all American purchasers, including those proficient in a non-English language who would ordinarily be expected to translate words into English." In re Spirits Int’l, N.V., 563 F.3d 1347, 1352, 90 USPQ2d 1489, 1492 (Fed. Cir. 2009). To support a refusal under §2(e)(4), the record must show that the surname significance is the primarysignificance. See In re Picone, 221 USPQ 93, 95 (TTAB 1984) (finding evidence that "PICON" is the name of a town and a mountain in Spain and that "piccone" is an Italian word meaning "pick" or "pickax" insufficient to overcome a refusal on the ground that PICONE is primarily merely a surname).

In In re Isabella Fiore, the Board noted that applicant had produced evidence that Italian is a popular language in the United States, such that the meaning of the term would be recognized by a wide variety of people; that "Fiore" is "listed as the only translation of the common English word 'flower;'" that Italian is a major, modern language, not an obscure language; and that the non-surname meaning of the term in Italian is not obscure. The Board found that FIORE "is the type of term that potential customers would stop and translate," and that "there is no question of whether the term would be recognized in its current form as the Italian word for ‘Flower.’" 75 USPQ2d at 1569.

In In re Weiss Watch Co., 123 USPQ2d 1200 (TTAB 2017), the Board determined that application of the doctrine of foreign equivalents was not appropriate. Id. at 1205. Applicant argued that WEISS means "white" in German and supported its argument with evidence from on online translation tool. The evidence indicated, however, that in German the word "white" is spelled as "Weiß" (with the German letter eszett), rather than WEISS. Id. at 1204. Moreover, the evidence did not show that WEISS spelled without the eszett translates to "white" in English. Id. The fact that the applied-for mark WEISS was not spelled in the standard German dictionary form of Weiß weighed against a finding that German speakers, upon seeing WEISS, would stop and transliterate first to Weiß and then translate to "white" in English. Id. at 1205.

The fact that a term has no meaning in a foreign language may also be relevant to a determination of whether a term is primarily merely a surname. In holding that PIRELLI was primarily merely a surname, the Board noted that the term "has no ordinary meaning in the Italian language, as the Italian dictionary excerpt, made of record by the Examining Attorney, shows." In re Industrie Pirelli Societa per Azioni, 9 USPQ2d 1564, 1566 (TTAB 1988) .

See TMEP §§809–809.03 for information regarding how to ascertain the meaning of non-English wording in a mark.

See also TMEP §§1207.01(b)(vi)–1207.01(b)(vi)(C), 1209.03(g), and 1210.10 regarding the doctrine of foreign equivalents.

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). The determination involves assessing the distinctiveness of the additional matter and whether its addition to the surname alters the primary significance of the mark as a whole to the purchasing public. Earnhardt v. Kerry Earnhardt, Inc., 864 F.3d 1374, 123 USPQ2d 1411, 1415 (Fed. Cir. 2017). 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

In all cases involving a surname preceded by one or more initials, the factual record "matters most" when making findings regarding consumer perception. In re Colors in Optics, 2020 USPQ2d 53784, at *3 (TTAB 2020). 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 the surname Fitzpatrick would be perceived as a given name and comprised a personal name, not primarily merely a surname); see In re Yeley, 85 USPQ2d 1150, 1153 (TTAB 2007) (holding J.J. YELEY would be perceived as referencing a particular person, not primarily merely a surname, because J.J. Yeley was recognized as the full name of a well-known NASCAR race driver); Michael S. Sachs Inc. v. Cordon Art B.V., 56 USPQ2d 1132, 1136 (TTAB 2000) (holding 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.").

Marks consisting of a single initial preceding a surname have been held to be primarily merely a surname. See In re I. Lewis Cigar Mfg. Co., 205 F.2d 204, 206, 98 USPQ 265, 267 (C.C.P.A. 1953); In re Colors in Optics, Ltd., 2020 USPQ2d 53784, at *4. However, the Board has noted that there is no per se rule that a single initial preceding a surname must be deemed primarily merely a surname. See In re Colors in Optics, 2020 USPQ2d 53784, at *4 (quoting In re Yeley, 85 USPQ2d at 1154). For example, a surname preceded by one initial may 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. See In re P.J. Fitzpatrick, 95 USPQ2d at 1413 (discussing In re I. Lewis Cigar, 205 F.2d at 206, 98 USPQ at 267). Thus, 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 be perceived as a personal name by the relevant consumers. See In re Colors in Optics, 2020 USPQ2d 53784, at *2-3. An applicant could show that such a mark is the name of a particular individual, such as the applicant or a signatory of the applicant, and provide evidence showing it would be recognized as such by the consuming public. See id. (holding J HUTTON primarily merely a surname rather than a personal name where no evidence was submitted to show Jade Hutton, an individual associated with applicant, went by or was known by J. Hutton and how the term was used, and she had signed a written consent Jade Hutton rather than J. Hutton). An applicant, however, must provide evidence that the mark would be perceived as a personal name by the relevant consumers, not argument alone. Id. at *4 (citing In re U.S. Tsubaki, Inc., 109 USPQ2d 2002, 2007 (TTAB 2014)).

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). If the name in the mark is identical to the name of the applicant or to a signer of the application (e.g., the mark is A. JONES and the applicant’s name or signatory is A. Jones), written 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), 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 Bed & Bars Ltd., 122 USPQ2d 1546, 1551 (TTAB 2017) (noting that presenting BELUSHI in the possessive form "is consistent with perception of the term as a surname"); Azeka Bldg. Corp. v. Azeka, 122 USPQ2d 1477, 1481 (TTAB 2017) (noting that "the possessive form of the term AZEKA'S, as used in the proposed mark AZEKA'S RIBS, is consistent with perception of the term as a surname"); 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 Additional Wording

When a mark is comprised of a term that, standing by itself, is primarily merely a surname, combined with additional wording, the distinctiveness of the additional wording is relevant to determining whether the primary significance of the mark as a whole is that of a surname. Earnhardt v. Kerry Earnhardt, Inc., 864 F.3d 1374, 1380-81, 123 USPQ2d 1411, 1415 (Fed. Cir. 2017). The inquiry is not limited only to the question of whether the additional matter is capable of functioning as a mark. Azeka Bldg. Corp. v. Azeka, 122 USPQ2d 1477, 1482 n.9 (TTAB 2017) (construing In re Hutchinson Tech. Inc., 852 F.2d 552, 554, 7 USPQ2d 1490, 1492-93 (Fed. Cir. 1988)). The additional term(s) must be evaluated to determine whether they are generic or merely descriptive. Earnhardt v. Kerry Earnhardt, Inc., 864 F.3d at 1380-81, 123 USPQ2d at 1415. In addition, the meaning of the mark as a whole must be assessed to determine whether adding the additional term to the surname alters the primary significance of the mark as a whole. Id. at 1381 (remanding to the Board to determine both whether the term COLLECTION in the mark EARNHARDT COLLECTION is merely descriptive and the primary significance of the mark as a whole to the purchasing public).

Merely descriptive terms that have not acquired distinctiveness do not have source-identifying significance and—like generic terms—when added to a surname will typically not alter the primary surname significance of the mark as a whole. In re Six Continents Ltd., 2022 USPQ2d 135, at *26-28, *30 (TTAB 2022) (holding ATWELL SUITES for hotel and other related services primarily merely a surname); Azeka Bldg. Corp. v. Azeka, 122 USPQ2d 1477 at n.9 (holding AZEKA’S RIBS for barbecue sauce primarily merely a surname). See TMEP §1209.01(b) regarding merely descriptive marks and TMEP §1209.01(c) regarding generic terms. If the policy were otherwise, one could evade Trademark Act §2(e)(4) by the easy expedient of adding merely descriptive matter or the generic name of the goods or services to a word that is primarily merely a surname. See In re Weiss Watch Co., 123 USPQ2d 1200 (TTAB 2017) (holding WEISS WATCH COMPANY for clocks, watches, and related goods primarily merely a surname); In re Integrated Embedded, 120 USPQ2d 1504 (holding BARR GROUP for training, engineering, and expert witness services in the field of computer hardware and software primarily merely a surname); 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 structure of the mark is "surname + additional wording" and none of the additional wording is inherently distinctive or has acquired distinctiveness, refusal of the entire mark under §2(e)(4) will be appropriate in most circumstances. Note that when the wording following the surname is geographic in nature, the wording should be assessed for whether standing alone it would be considered geographically descriptive or geographically deceptively misdescriptive of the applied-for goods or services. For example, if the geographic meaning of the additional term is obscure, then its addition to a surname would normally result in a combination that does not have the primary significance of a surname and the mark as a whole would not be considered to be primarily merely a surname under §2(e)(4).

If the wording combined with the surname is inherently distinctive (i.e., matter that is fanciful, arbitrary, or suggestive), the mark is not considered to be primarily merely a surname under §2(e)(4).

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 TMEP §1211.01(b)(iv) regarding surnames combined with titles, §1211.01(b)(iii) regarding surnames combined with initials, and §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.