What is a Surname Refusal?

TMEP 1211 Refusal on Basis of Surname . . . reflects the common law that exclusive rights in a surname per se cannot be established without evidence of long and exclusive use that changes its significance to the public from that of a surname to that of a mark for particular goods or services. The common law also recognizes that surnames are shared by more than one individual, each of whom may have an interest in using his surname in business; and, by the requirement for evidence of distinctiveness, the law, in effect, delays appropriation of exclusive rights in the name. In re Etablissements Darty et Fils, 759 F.2d 15, 17, 225 USPQ 652, 653 (Fed. Cir. 1985). The question of whether a mark is primarily merely a surname depends on the mark’s primary significance to the purchasing public. See, e.g., Ex parte Rivera Watch Corp., 106 USPQ 145, 149 (Comm’r Pats. 1955). Each case must be decided on its own facts, based upon the evidence in the record.


3 DIY Response Options for Overcoming Surname Refusal


1. Argue persuasively why the element of the mark is not primarily merely a surname to the purchasing public (See http://www.census.gov/genealogy/www/data/2000surnames/index.html for a list of the most common surnames) or if there are distinctive elements in the mark aside from the refused term, disclaim the surname and proceed with the remaining distinctiveness only;

2. Argue persuasively an exception to the rule;

3. Acquired Distinctiveness: A mark deemed primarily merely a surname may be registered on the Principal Register under Trademark Act Section 2(f) by satisfying one of the following:

(a)        Submitting a claim of ownership of one or more prior registrations on the Principal Register for a mark that is the same as the mark in the application and for the same or related goods and/or services.  37 C.F.R. §2.41(b); TMEP §1212.04.;

(b)        Submitting the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §§2.20, 2.33:  “The mark has become distinctive of the goods and/or services through applicant’s substantially exclusive and continuous use in commerce for at least the five years immediately before the date of this statement.”  37 C.F.R. §2.41(b); TMEP §1212.05(d).; or

(c)        Submitting actual evidence of acquired distinctiveness.  37 C.F.R. §2.41(a); TMEP §1212.06,  Such evidence may include the following:  examples of advertising and promotional materials that specifically promote the applied-for mark as a trademark or service mark in the United States; dollar figures for advertising devoted to such promotion; dealer and consumer statements of recognition of the applied-for mark as a trademark or service mark; and any other evidence that establishes recognition of the applied-for mark as a source-identifier for the goods and/or services.  See In re Ideal Indus., Inc., 508 F.2d 1336, 184 USPQ 487 (C.C.P.A. 1975); In re Instant Transactions Corp. of Am., 201 USPQ 957 (TTAB 1979); TMEP §§1212.06 et seq.



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Overcoming A Merely Descriptive Refusal




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