New York Trademark Attorney Blog
One of the most frequently asked questions in our trademark practice is, can my last name be used as a trademark? The answer is that it depends on the nature of the surname. In this blog post we will examine an example of when a surname can be used as a trademark and an example of when it would be considered primarily merely a surname. See In re G R Lane Health Products Limited, Serial No. 85115445 (July 10, 2013) [not precedential]. In this case, the Applicant filed for the mark JAKEMANS for throat lozenges and similar goods in International Class 5 and hard candies in International Class 30. The Examining attorney refused the registration under section 2(e)(4) of the Trademark Act (15 U.S.C. §1052(e)(4)) on the grounds that JAKEMANS is primarily merely a surname.
The first question to ask is when viewing the trademark in relationship to the goods or services, will the purchasing public perceive the term’s primary significance as that of a surname. The Trademark Trial and Appeal Board (the “Board”) has identified five factors to be considered in making this determination:
(1) Is the surname rare;
(2) Is the term the surname of anyone connected with the applicant;
(3) Does the term have recognized meaning other than as a surname;
(4) Does the term have the look and feel of a surname; and
(5) Whether the stylization of the lettering is distinctive enough to make a separate commercial impression.
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. See In re Benthin Management GmbH, 37 USPQ2d 1332, 1334 (TTAB 1995). During the prosecution, the Examining Attorney presented evidence to show that the surname was not rare. The Examiner produced evidence showing 87 names in a telephone directory for the term Jakeman. The Board held that 87 names is NOT substantial evidence that Jakemans is a common surname. In fact, the Board determined that Jakemans is a very rare surname in the U.S. See also, In re United Distillers plc, 56 USPQ2d 1220 (TTAB 2000), where HACKLER was held to be a rare surname despite the 1,295 listings in the telephone directory.