Trademark Law and Your Business—Protecting Your Brand

I often get requests from clients who want to register their surname as a trademark. The Lanham Act specifically excludes the use of a surname as a trademark if the mark is “primarily merely a surname”. The policy decision behind this exclusion is to allow other persons with the same surname the right to use their surname in association with their goods and services. 

To determine whether a mark  is primarily merely a surname, the Patent and Trademark Office will look to the number of people who have the same surname, whether the name has any meaning other than as a surname, whether anyone associated with the applicant has the surname, the notoriety of persons with that surname, and the “look and feel” of the surname, although this last factor has become controversial. While the PTO registers some surnames, many more get rejected because of the number of people with the same surname.

As a business owner, you need to be aware that, although registration of a surname is unlikely, you should still clear your name before using it in commerce. If you wish to register your surname as a trademark, you should be prepared to spend some money to overcome the objections of the PTO.

Because of the cost of clearing several different marks, I am often asked how business owners can reduce the number of potential names to submit for clearance. As a pre-clearance procedure, I often tell clients to choose up to 10 arbitrary or fanciful names to search at the United States Patent and Trademark Office Web site. The PTO Web site lets you search for registered trademarks and trademarks that have been applied for by other companies.

As a business owner, you can run a pre-clearance search on your 10 chosen names and eliminate any names that conflict with your chosen name. Remember, though, that just because a name does not appear on the PTO Web site, does not mean the name is available for registration. Another person might be using the name, but has not registered it yet or perhaps they spelled the name with a slight change. For example, if you search for BUGS, you would miss every registration containing the word BUGZ. I’ve found that by conducting a pre-clearance search, you can narrow your original list of 10 names to 2 or 3. You can then submit these 2 or 3 names to your trademark attorney for full clearance.

Michael Atkins, trademark attorney and the writer of the excellent Seattle Trademark Lawyer blog, points to a story in the Seattle Times about a business owner who twice failed to obtain trademark protection for his goods (wine) before finally succeeding on the third try. The business owner chose to forgo the services of a trademark attorney and attempted to register his mark on his own. The business owner justified his decision by stating that he didn’t want to pay $10,000.00 to a trademark lawyer to register his mark.

Like Michael, I don’t know of any trademark attorney that charges $10,000.00 to clear, file, and attempt to register a mark. But the point is that $10,000.00 is cheap compared to the potential cost of procuring your own trademark without help or compared to the potential value of your brand. If your brand is eventually worth $1,000,000.00, then securing that brand for $10,000.00 seems like a good deal. And you don’t have to waste thousands of dollars in advertising materials and your time to deal with refusals. As a business owner, you should focus on making the best quality product or attaining high levels of service, not fooling around with the the Patent and Trademark Office.

I should also note that, in my experience, this situation occurs regularly and I often have to charge more to fix the problem than I would have charged if the business owner had simply come to me first.