The Primarily Merely a Surname Rejection
Primarily Merely a Surname – You’ve submitted a trademark application and after many months, you finally receive news from the USPTO—but it’s an Office Action. There are several reasons you may receive a rejection from the USPTO for a trademark application, the most popular one being a Section 2d—“likelihood of confusion” rejection. However, there are many other rejections, including sound, appearance, meaning, commercial impression, the mark is seen as merely descriptive or deceptively misdescriptive, geographically descriptive, merely ornamental, and more. Another reason for rejection may be because the mark is “primarily merely a surname.”
If your Office Action says the rejection is because the proposed mark is primarily merely a surname, i.e., a family name or a last name, it simply means that the surname associated with the mark is the primary significance of the mark. For example, the mark “Smith’s Hardware” is primarily a surname and the primary significance of the mark is the last name “Smith,” which does not make the mark distinctive from the goods offered.
Primarily Merely a Surname Rejection Defenses
However, there are some things you can do to demonstrate the mark is not primarily merely a surname. In order to overcome this ‘primarily merely a surname’ rejection, you must show that the mark has some acquired distinctiveness beyond being a mere name. One option includes providing evidence of prior registrations by showing you have one or more active prior registrations on the Principal Register of the same mark at issue here.
Another option is that you may submit a sworn affidavit that the mark has been in continuous use in commerce for at least five years immediately preceding the application. If this is the case, then you have proof that the mark has already acquired distinctiveness in the last five years.
A third option can be supplying a statement and other evidence that the mark has acquired distinctiveness of the goods or services. Evidence may include advertisements, sales, length and exclusivity of use, consumer studies, and media coverage.
No matter how you wish to proceed in demonstrating your mark is more than primarily merely a surname, we recommend you consult an attorney to best assess your options in moving forward as each situation is unique and what may apply to one situation may not apply to yours. Our office has handled many office actions, most often when the applicant has used another non-attorney service for the initial submission. Feel free to contact us for any of your questions on correspondence from the USPTO.