Applying for Surnames as Trademarks: Fanciful or Not?
Some surnames are used for entity formation names, like “Johnson & Johnson Consumer, Inc.” This would protect “Johnson & Johnson Consumer, Inc.” as a corporate entity name, prohibiting other entities from bearing the name. “Johnson & Johnson” would also have common law rights to its name for having used it in interstate commerce on its products. “Johnson & Johnson” has successfully registered its corporate name as a word mark. But could “Johnson & Johnson” have future issues with others who successfully obtain the mark? In 2000, 1.8 million people bore the surname “Johnson,” and any of those people could go off to form companies that bear the name “Johnson” as any part of its entity’s name. Any of those entities may some day apply to the USPTO to establish “Johnson” as a registered word mark. Currently, Trademark Electronic Search System will return 532 live records for registered trademarks that include “Johnson.” Has “Johnson” become so popular as to continue to rise to the level of fanciful? Does it matter?
On March 9, 2016, the Trademark Trial and Appeal Board (“TTAB”) reversed a refusal on the registration of “Valette” because the Examining Attorney found evidence that led her to believe that “Valette” was a surname and had no other meaning beyond its surname use.
Nordstrom, Incorporated (“Nordstrom”) filed for trademark “Valette” in order to use such word mark (a type of trademark) on a line of blouses, blazers, baggage, etc. The United States Patent and Trademark Office refused registration on the word mark because the Examining Attorney found the name to be in violation of 15 U.S.C. 1052(e)(2) that prohibits the use of surnames as trademarks if the surname is primarily merely a surname (and not fanciful).
In re Benthin Mgmt. GmBH, 37 USPQ2d 1332, 1334 (TTAB 1995), the Board established five factors to determine if the word mark used is primarily merely a surname. The five factors are as follows: (1) the degree of the surname’s “rareness”; (2) whether anyone connected with the applicant has the mark as a surname; (3) whether the mark has any recognized meaning other than as a surname; (4) whether the mark has the “look and feel” of a surname; and (5) whether the manner in which mark is displayed might negate any surname significance.
Ultimately, the Board’s decision was based on whether the public would perceive “Valette” as a surname or a fanciful mark. While facially the name can be found to be a surname, given the Examining Attorney’s search that returned 200 persons with “Valette” as their surname, the small number of 200 proved the surname to be rare and not popularly used as a surname. Based on this fact, the public would likely perceive “Valette” as a fanciful mark.
Lastly, the Opinion is “Not a Precedent of TTAB.” However, this case can be cited for its persuasiveness. But the statute explicitly states “merely,” and as long as future applicants can find something more than mere, surnames have a chance to be registered as fanciful word marks, perhaps even popular ones.
In re Nordstrom, Inc.,2016 WL 1130185 (TTAB 2016).
This is does not create an attorney-client relationship, and the information here should not be construed as legal advice.