Article · Intellectual Property

Registering Your Own Name as a Trademark: Surname Bars, Consent, and Secondary Meaning

Type
Article
Jurisdiction
National
Date
2024-09-18
Topic
Intellectual Property

A personal name can become a federally registered trademark, but the Lanham Act treats surnames with more suspicion than any coined word. This UpLaw analysis works through the two statutory obstacles that stand between a founder and a registration certificate: the "primarily merely a surname" bar of Section 2(e)(4), applied through the five Benthin factors and the primary-significance test, and the Section 2(c) rule that no living person's name registers without written consent, recently upheld by the Supreme Court in Vidal v. Elster. It maps the escape hatch of acquired distinctiveness under Section 2(f), from the five-year presumption to survey evidence and the Supplemental Register, and separates trademark rights from the parallel state-law right of publicity. Worked examples, a step-by-step filing roadmap, a surname-refusal response playbook, and extensive cross-references to related UpLaw resources round out a research-grade treatment for founders, designers, celebrities, and their counsel.

Registering Your Own Name as a Trademark: Surname Bars, Consent, and Secondary Meaning

Intellectual Property > Trademark Registrability | Published 18 September 2024 - Updated 28 November 2024 | UpLaw - uplaw.us

Your surname is one of the harder things to register as a trademark. This guide explains the two Lanham Act obstacles that make it so, the doctrinal path around each, and how a name becomes a brand the law will protect.

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