Can You Trademark A Last Name?
Under federal trademark law, it is not possible to get a federal trademark registration from the USPTO on a mark that would be considered primarily merely a surname, or last name, unless you can establish secondary meaning (also referred to as “acquired distinctiveness”).
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In layman terms, this means that you would have to establish that consumers in the marketplace now view your mark as a reference to your company, and not as a reference to your last name. So yes, it’s entirely possible to trademark a last name, but if you cannot satisfactorily prove “acquired distinctiveness” to the United States Patent and Trademark Office (USPTO), you will be denied the full protection of federal law for your trademark.
How does the USPTO determine whether your mark is primarily merely a surname? They look to several factors, including whether anyone connected to the trademark applicant has that surname, whether the mark is a common surname, whether the mark has any alternative definitions beyond the surname, and whether the mark has the “look and feel” of a surname when deciding if you can trademark a last name. There are multiple examples of surnames successfully going through the trademarking process; Dell, Ford, and Chanel to name just a few.
I should note that the whole purpose behind prohibiting marks that are merely surnames is to keep them available for potential applicants who want to use their own surnames as part of their business identity. As always, you should consult a competent trademark attorney before proceeding with a trademark registration.
Examples of Trademarked Surnames
To illustrate what it means to establish “acquired distinctiveness”, let’s look at a few examples of last names that successfully became trademarks.
“Kellogg’s was founded as the Battle Creek Toasted Corn Flake Company on February 19, 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.” (Source)
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. The mark was originally filed for registration on December 15th, 1914 and was officially registered on October 18th, 1921.
The McDonald’s story was recently dramatized in the 2016 movie, The Founder. It shows the journey of McDonald’s from the single location hamburger stand run by Richard and Maurice McDonald, to what would become a worldwide brand under Ray Kroc. Through its popularity and global recognition, it isn’t hard to see why the McDonald name had achieved the required distinctiveness needed to be a registered mark.
The name was originally filed for protection on May 4th, 1961. It was officially registered on January 8th, 1963 as a service mark, in the goods & services category of drive-in restaurant services.
In recent years, McDonald’s has been accused of being a bit of a bully due to the aggressive and thorough manner in which they defend their various marks. Though, given the size and reach of the company, it’s understandable that they would worry about consumer confusion and copying.
A more modern addition to the list, the Kardashian family has used their surname in a variety of marks, covering goods and services ranging from lip gloss to retail stores. The name first appeared in a registered mark when Kim Kardashian filed to register her name in February of 2007 in the categories of both cosmetics and jewelry. The mark 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 February 26, 2013 and officially registered on January 21, 2014 covering “Advertising services, namely, promoting the brands, goods and services of others; endorsement services, namely, promoting the goods and services of others.”
The more general marks of the Kardashian name are typically registered by three California corporations representing each of the three oldest sisters, Kim, Khloe, and Kourtney. The company names are Kimsaprincess Inc., Khlomoney Inc., and 2Die4Kourt, respectively.
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