How to Respond to Section 2(e)(4) Surname Refusals:A Video Q&A with IP Attorney John Miranda
Alt Legal Team | March 08, 2021
Surname refusals are on the rise with the USPTO. As a result of trademark clutter and depletion, trademark applicants are simply running out of eligible trademarks to choose from. In response, applicants are increasingly filing applications with their surnames and receiving surname refusals from the USPTO. IP attorney and former USPTO trademark examiner John Miranda joined us to discuss surname refusals and how to overcome them. Watch the video interview and review our breakdown below.
Can you give us an introduction to surname refusals? What is the policy behind surname refusals? Why are surname refusals on the rise?
Trademark surname refusals have their roots in common law. Under common law, if a trademark consisted of a common surname then the trademark rights would not attach. The reason behind this is common surnames are shared among many individuals and families and people tend to do business under their surnames. The policy rationale is that in order to keep people free to conduct business under their surnames, we can’t encumber common surnames with exclusive trademark rights unless the trademark owner establishes acquired distinctiveness. This means that the owner must have established that the meaning of the trademark is perceived in the minds of consumers as brand identifier, rather than a common surname.
In the US, trademark law is governed by the Lanham Act and surname refusals are codified under Section 2(e)(4). Generally, the way that surname refusals come up is that someone applies for a trademark with the USPTO and they receive an office action with a Section 2(e)(4) refusal that the mark is primarily merely a surname.
Surname refusals are on the rise because, as some law professors and academics have pointed out, we are running out of trademarks and room on the register for new, distinctive trademarks. Some expect that as a result, people will resort to the traditional practice of using their surnames to conduct business. In that case, we can expect to see a rise in Section 2(e)(4) refusals from the USPTO.
How do trademark examiners determine if a surname is registrable or not? What factors are considered?
When an examining attorney receives an application with a term that looks like a surname or consists of a surname and is considering a Section 2(e)(4) refusal, the first step is to conduct a public record search with Lexis Nexis or another search company. By reviewing phone and address records, this informs the examiner how many people in the US have the particular surname. Generally, the internal practice when I was at the USPTO was to look for the “magic number” of 150 people with the surname. If 150 people have the surname, then the presumption is that the examining attorney will issue a surname refusal, especially if the number gets closer to 500-1,000.
The second factor is whether the surname is connected to anyone associated with the trademark applicant. For the most part, the issue that arises here is that the trademark application references the surname of the person who founded the company. To help determine whether this is case, the examining attorney will look at the applicant’s website and visit the bio, about, or company history section of the website to assess whether the surname is in fact connected to anyone associated with the trademark applicant. Even if a surname is rare, you can sometimes get a surname refusal if it’s clear from the applicant’s website that the mark at issue is the surname of anyone connected to the company.
The third factor is whether the trademark has any recognized meaning other than a surname. For example the name “Smith”, which is one of the most common surnames in the US, is not treated like a surname because the word “smith” has other recognized meaning that is not a surname.
The fourth factor, which is probably the least important, is whether the trademark has the “look and feel” of a surname, that is, whether the applied-for mark has the structure and pronunciation of a surname. This factor sometimes serves as a “tie breaker” when looking at all the factors together.
The fifth factor is whether the surname is combined with any distinctive elements like a distinctive design or wording. If the surname is combined with a distinctive element, this could result in the examiner deciding not to issue a surname refusal.
How can we distinguish between marks that are primarily merely a surname and marks that contain surnames but also hold other significant meaning?
The refusal is titled “primarily merely a surname” and the key word in the refusal is “primarily”. Lots of common surnames are not primarily merely surnames and have recognized meaning. For example, the surname and word “KING.” “KING” would not be refused as primarily merely a surname.
Should you receive a Section 2(e)(4) refusal, some of the most persuasive evidence to overcome the refusal is dictionary evidence showing that the mark has other recognized meaning. Wikipedia is also a good resource for this. Oftentimes, the examining attorney will also use Wikipedia. For example, if the examining attorney conducts a search on Wikipedia for “Jones” and comes up with a list of million people with the surname Jones, then this is persuasive evidence that the mark is primarily merely a surname. Sometimes you can respond by searching Wikipedia and finding that the term has other significance.
There is certain evidence that the examiner will find more or less persuasive. For example, if the surname has mostly geographic meaning outside of being a surname, that is typically less persuasive. This is because examiners known that usually towns or cities are named after a surname. Some of the more persuasive evidence is if a surname is also a common first name. This is a common way in which a surname refusal can be overcome. For example, my last name “Miranda” is a common surname, but it is also a very common first name, so even if MIRANDA was refused as primarily merely a surname, the refusal could easily be overcome because it has other significance as a first name.
Is it possible to overcome a Section 2(e)(4) refusal by combining the surname with other elements?
It depends on what other elements the surname is combined with. If the surname is combined with wording that is descriptive, generic, or informational, the USPTO considers this non-distinctive wording and the applicant will still receive a Section 2(e)(4) refusal. For example, if you tried to trademark “JONES PLUMBING” for plumbing services, “plumbing” is generic so this will result in a Section 2(e)(4) refusal. However, if you combine the mark with distinctive wording or a distinctive design or logo, that should not result in a Section 2(e)(4) refusal, the reason being that the commercial impression of the mark is not primarily merely a surname. Be aware that the design elements must be sufficiently distinct to overcome a surname refusal. For example, an examiner will consider a design comprised of basic geometric shapes as mere background carriers that are not sufficiently distinct to overcome the primary surname significance of the trademark.
What more can be done to register a mark that has received a Section 2(e)4 refusal? Can you register on the Supplemental Register? Or can you try to prove acquired distinctiveness under Section 2(f)?
Trying to register on the Supplemental Register or to attempting prove acquired distinctiveness are both options if you receive a Section 2(e)(4) refusal.
So long as the mark is eligible for the Supplemental Register (that it is being used in commerce or that it is based on a foreign registration), a mark that is found to be primarily merely a surname is generally allowed to register on the Supplemental Register. This is usually a fairly easy process and the examining attorney will typically allow registration to the Supplemental Register. Before considering applying for the Supplemental Register, applicants should be aware of the benefits and drawbacks of the Supplemental Register. The benefits include:
You still get the trademark registration
You can still use the trademark symbol ®
You can file a lawsuit in federal court for trademark infringement
You can use the registration as a basis for filing a trademark registration in a foreign country
However, it’s important to consider that the USPTO, judges, courts, and lawyers consider marks registered on the Supplemental Register to be very weak. Generally, the USPTO will not provide very much protection to marks on the Supplemental Register and will allow similar marks to register. The USPTO will prevent identical marks from registering when used in connection with very similar goods and/or services, but the level of protection is not as high if the mark was registered on the Principal Register. Additionally, with a registration on the Supplemental Register, you are not eligible to claim incontestability after a period of five years. Lastly, it is very difficult to enforce registrations on the Supplemental Register as you do not have a presumption of ownership or exclusive rights.
Since the Supplemental Register has its drawbacks, should you receive a Section 2(e)(4) refusal, it’s always best to try and prove acquired distinctiveness and register the mark on the Principal Register based on §2(f). If you have been using your mark in commerce for five or more years, you will be eligible to prove acquired distinctiveness. If you have not been using the mark in commerce for five or more years, the process is more challenging. You will need to submit extrinsic evidence showing that the mark has acquired distinctiveness based on unsolicited media coverage, consumer surveys showing that consumer recognize your brand, and sales and marketing figures. You basically have to show you’re doing pretty well and that your brand is kind of famous! Ideally, you should try to prove acquired distinctiveness because you should aim to register on the Principal Register as opposed to the Supplemental Register.
John joined Abelman Frayne & Schwab in 2020 as an associate attorney in the trademark department. Prior to joining the firm, John served as a Trademark Examining Attorney with the U.S. Patent & Trademark Office, where he reviewed thousands of trademark applications and determined whether they were eligible for registration.
John concentrates his practice on U.S. trademark prosecution, clearance, and counseling. John also has experience in negotiating and preparing assignments and co-existence agreements.