Setting up a business in the name of the family name or surname is an age-old practice and not uncommon. Though the protection of surnames as trademarks is difficult, yet we are surrounded by surnames as registered trademarks. Honda, Ford, Ralph Lauren, Suzuki, Sony, Procter and Gamble, Johnson and Johnson, HP, and Dell are a few examples from the long list of such marks that exist worldwide. The usage of one’s surname in the course of trade cannot be restricted even by a registered proprietor, provided the use is in a bona fide manner. But the question of the surname being distinct enough to be registered as a trademark is not as straightforward as we think.
Most nations will require showing ‘acquired distinctiveness’ to register a family name as a trademark. Under the US Trademark Law, a trademark that is used mainly as a surname cannot be registered without proof that the mark has acquired distinctiveness through use. Only in the EU filing can surnames be registered as trademarks conveniently under the EUTM process. Under the EUIPO guidelines, surnames are generally considered distinctive. The same was confirmed by the European Court of Justice in 2002 in Case C-404/02 Nichols, which stated, “The criteria for assessment of the distinctive character of trademarks constituted by a personal name are therefore the same as those applicable to the other categories of trademark.”
Acquired Distinctiveness
If the mark is primarily a surname, it can only be registered if there is evidence of ‘acquired distinctiveness,’ also known as ‘secondary meaning.’ In other words, the applicant must show that in the minds of the public, the primary significance of a product feature or term is to identify the source of the product. Once secondary meaning for a surname has been established, it can be registered and used to stop others from using the owner’s name in connection with similar goods or services, provided such use might cause consumer confusion.
This is why names like Trump, Disney, Gucci, and Ford are Registered Trademarks. Under these circumstances, a person’s right to use his or her name becomes much more complicated and can result in complex, lengthy, and expensive legal suits.
To illustrate what it means to establish ‘acquired distinctiveness,’ here are a few examples of surnames that successfully became trademarks:
1. Kellogg’s
Kellogg’s was founded as the Battle Creek Toasted Corn Flake Company on 19th February 1906 by Will Keith Kellogg as an outgrowth of his work with his brother John Harvey Kellogg at the Battle Creek Sanitarium following practices based on the Seventh-day Adventist Church. The company produced and marketed the hugely successful Kellogg’s Toasted Corn Flakes and was renamed the Kellogg Company in 1922. The Kellogg’s name originally began as a last name, but through the popularity of its breakfast cereal, it acquired a secondary meaning as a reference to the company for most people.
2. McDonald’s
Mcdonald’s started as a hamburger stand run by Richard and Maurice McDonald. Due to its popularity and worldwide recognition with time, the Mcdonald’s name achieved the required distinctiveness needed to be registered as a trademark.
3. Kardashian
A more recent addition to the list, the Kardashian family, has used their surname in a variety of trademarks covering goods and services ranging from cosmetics to retail stores. The name first appeared in a registered mark when Kim Kardashian filed to register her name in February 2007 in the categories of both cosmetics and jewelry. The mark got registered in both categories by September of the same year. As the family’s popularity continued to grow, so did their list of marks. The surname Kardashian was filed for protection on 26th February 2013 and officially registered on 21st January 2014, covering “advertising services, namely, promoting the brands, goods, and services of others and endorsement services, namely, promoting the goods and services of others.”
Ways of Showing Acquired Distinctiveness
There are three basic ways to show secondary meaning, some easier than others:
- Prior Registrations – The applicant owns one or more registrations for the same surname for similar or related goods or services.
- Five Years Use – The applicant shows substantially exclusive and continuous use of the mark in commerce for five years before the date on which the claim of distinctiveness is made.
- Other Evidence – The applicant shows evidence of copying, advertising expenditures, sales success, length and exclusivity of use, unsolicited media coverage, or consumer studies (linking the name to a source).
For example, in the US, the USPTO says that “for most surnames, the statement of five years’ use will be sufficient to establish acquired distinctiveness.” Proving secondary meaning by actual evidence, on the other hand, can require expensive surveys and market research. For marks that have been used for less than five years, it may make more sense to select an inherently distinctive mark.
What Factors Should You Consider to Determine Registrability?
For registering a surname as a trademark, the following questions need to be asked:
- Is the proposed trademark a common surname, or is it rare? If rare, this weighs in favor of registration;
- Is the proposed trademark the applicant’s last name? If yes, this weighs in favor of registration;
- Does the proposed trademark have acquired distinctiveness? If yes, this weighs in favor of registration.
- Does the proposed trademark have any other recognized meaning(s) other than a surname? If yes, this weighs in favor of registration;
- Does the proposed trademark ‘look and feel’ like a surname? If yes, this weighs against registration; and
- Is the proposed trademark sufficiently stylized or otherwise distinctive, and thus not primarily merely a surname? If yes, this weighs in favor of registration.
Key Takeaways for Practice
In summary, if the purchasing public’s primary impression when encountering the mark is that of a surname and not a trademark, acquired distinctiveness will have to be proven. While it may seem counter-intuitive, there is no inalienable right to use one’s name as a trademark. And while using a family name may seem important and an obvious choice – one should weigh the risks and benefits of using a surname as a trademark. Given the ambiguity regarding the registration of a surname as a trademark, it may not always be the best choice if your surname is already a well-known trademark.
In reality, despite the risks of using a surname commercially, many will continue to do so. In such cases, it becomes imperative to evaluate the pros and cons of seeking a Trademark Registration before filing. Performing a Trademark Search and carefully crafting the Trademark Application in the best way possible to avoid a refusal are the two most crucial steps to be undertaken. Another intelligent way of avoiding a refusal is to combine two surnames, such as ‘Abercrombie and Fitch,’ or combining a non-descriptive and distinctive name with a surname, or using first name initials along with the surname, or using a design element. Finally, it should be noted that when it comes to trademark battles over the use of family names as marks, the courts are always inclined towards minimizing the likelihood of confusion among the consumers while at the same time protecting the right of bona fide users of the family name to use it in trade.