Can I trademark a surname?

Although there are many surnames that have been used in trademarks over the years (such as Mcdonald's and Hayward’s), there are a lot of criteria that companies have to meet in order to be successful in registering such a mark.

According to Nat Law Review, in a recent case a US based firm tried to trademark the name “Dickman’s” for “fruit-based spread; jellies and jams; marmalade; pickled fruit; pickled vegetables; pickle; preserved fruit and vegetables; preserved fruit; processed food; processed vegetables and fruits”. However, this application was refused due to the fact that the proposed mark only consisted of a surname.

In general, a term consisting of a surname can only be trademarked if the brand has already acquired distinctiveness in the marketplace and acts as a source identifier for the consumer. Therefore the brand has to function as a trademark and not just as a surname. In the ‘Dickman’s’ case, the court ruled that the brand had not yet achieved this.

Furthermore, in order to increase the chance of a mark including a surname being registered, the surname itself should be as unusual as possible to be distinctive. In this case, Dickman is a relatively popular surname in the US and therefore it is likely that the brand would be viewed more as a surname than a source identifier.

If  the word can be recognised as something other than a surname then it is also more likely to be accepted as a trademark. For example if you were trying to trademark the surname ‘Orchard’ it may be more successful because it has a second meaning as a collection of fruit or nut trees planted in an enclosed area of land.

The negation of the surname’s importance in the way in which the mark is presented may also increase the likelihood of the mark being approved for registration.

In addition, the surname must not be used in the possessive form in the mark as this will only reinforce the idea of the term as a surname and not a source indicator.

Choosing your trademark name may be one of the most important decisions you make when starting up your business. Your trademark forms the face of your brand and so it needs to be strong, distinct and memorable. Therefore when choosing your trademark name  you want to pick one that is least likely to be rejected by the trademark authorities.

Although surnames can be used as trademarks  if they can meet the above criteria, the three main types of name that can be successfully trademarked are suggestive, arbitrary or fanciful names. These three types of trademarks should always be considered before attempting to register any other type of mark.

For advice and more information on searching, acquiring, registering and enforcing Trademarks please visit our website, http://www.lipex.com.

Our unique database of trademarks for sale or license could save you time and help protect your brand.