Registering a trademark can protect your intellectual property. While you may want your company to bear your personal moniker, complications could arise if your business entity is considered a surname. The US Patent and Trademark Office (USPTO) doesn’t always grant trademark protections in these instances. Overcoming a surname refusal from the USPTO is not impossible when you are empowered with the knowledge to do so.
Identifying a product, business, or service with a last name can feel like a sense of accomplishment. Customers from all over begin to associate your name with a product they know and love. In order to protect that, you can apply to the USPTO to ensure that the positive reputation you are building is specific to you and your business. However, nothing can feel like a greater setback than being denied that association through a refusal from the USPTO.
The USPTO follows strict guidelines in issuing trademarks, particularly when it comes to those involving surnames. Under the law, trademarks may not be issued based on an application in which the mark is primarily based on a surname. The USPTO deems these types of marks as not registerable because they lack distinctiveness. Most often, refusals are based on any one of the following reasons:
These are just a few of the reasons that a trademark could receive a surname refusal. In order to still pursue a trademark using a surname, there must be evidence that shows there is significance to the last name when considering the purchasing public.
In order to fight back against a refusal, it is first important to understand the criteria used to determine trademark approvals. Simply, it comes down to five factors:
These five criteria are the basis for fighting back against a refusal. To begin, evidence can be submitted to support any of these criteria. Often, this starts by proving there is significance beyond a last name. Next, evidence can be presented to show that the trademark has been in regular commercial use for more than five years.
Other ways to present evidence can include producing advertisements that are regularly used with the trademark, surveys issued to consumers, coverage by the media in which the trademark is used, reports of sales, proving the length of use, and showing the exclusiveness of the trademark use.
These are just a few of the ways in which you can present a case to rebuke a surname refusal. Working with an experienced and knowledgeable attorney can help to determine a course of action.
A: There are several reasons that a trademark could be refused by the USPTO. These reasons include its specific relation to a local geographic location, the trademark is primarily a surname, it is deceptive in nature, it is likely to cause confusion, and more. Before submitting your trademark application, an attorney can review your application for potential obstacles.
A: Surname trademarks are those that could be beneficial to family-operated businesses. The trademark is used to identify the goods or services provided by the business in the hopes that the name becomes synonymous with the product. When a surname is trademarked, it distinguishes that business from others. Businesses that utilize these types of trademarks may have the intent of passing the business through generations.
A: Failing to trademark a name can leave a business susceptible to infringement from competitors. While a business could use its logo and manage rights to it in its local geographic area, it could have difficulty protecting itself from larger businesses and corporations or those who may operate outside of their geographic location from using their trademark.
A: The difficulty in trademarking a name is a matter of the circumstances surrounding the application. With the help of a qualified attorney, you can find the application fairly simple; however, there are many different obstacles that you may need to overcome. An attorney can guide you through the process in order to help your application meet successful approval.
Whether you are facing a surname refusal or you are just starting your trademark application, the business law attorneys at Four Reasons Legal can help. Contact us today, and let us help answer the questions you need to keep your business moving forward.