By Susan Neuberger Weller

There are many “myths” that float about in the general public about what can and cannot function as a trademark. For example, people often tell me that they “know” that “common words” can never be protected as trademarks. That, of course, is totally false. Common words can absolutely function as trademarks depending on how they are used. For example, the word “apple” is a “common word” and yet it also functions as a world-famous trademark for a computer company. Another myth is that everyone has the absolute right to use their own name as a trademark. This, too, is completely false for a variety of different reasons. For example, not everyone can protect their surname as a trademark, even if they are already using it as a company name or as the brand name for their products or services, even if no one else has prior rights to that surname as a trademark. How can this be possible?

Under US trademark law, a mark which is “primarily merely a surname” cannot be protected as a trademark without proof that it has “acquired distinctiveness.” A mark is considered to be  “primarily merely a surname” if its primary impact or impression on the purchasing public is that of a mere surname and not a trademark. This rule was created to address the reality that many surnames are shared by more than one person, each of whom may have an interest in using his or her surname in business. Since trademark law is intended to protect consumers from being confused or deceived by the use of a particular trademark, everyone cannot claim rights in the same surnames simply because it is their actual surname or chaos and confusion would ensue. Thus, the law requires that until certain surnames become well known and associated with a specific business, specific products, and/or specific services — in other words have “acquired distinctiveness” — no one can claim exclusive rights in that surname. Once the surname has achieved a level of recognition among the consuming public as more of a mark and is not thought of as “merely” a surname, exclusive rights to the surname as a mark can exist. Think MCDONALD’S. Think DELL. Think FORD.

Not all surnames, however, fall into the “primarily merely a surname” category. Surnames that are “rare” can often function as protected trademarks without having to prove “acquired distinctiveness.” Other factors that are considered in determining whether a surname falls into the “primarily merely” category are whether there is anyone using the surname that is connected with the person who wants to protect it as a trademark, whether the surname has any meaning other than as a surname, and whether the surname has the “look and feel” of a surname.

This rule applies to large and small companies alike. The Mott’s food and beverage company,  which was founded in 1842 by Samuel R. Mott, recently lost its bid to register the mark MOTT’S for baby food. The US Trademark Trial and Appeal Board held that “Mott” was “merely a surname” even though the mark was already registered as a trademark for use on other company-branded food products. The Board stated that the prior trademark registrations did not mean the mark could be registeredautomatically for baby food. It made clear that each case must be assessed on its own merits and the evidence presented in the specific case, and that the record before it in connection with the specific applications at issue, namely, Application Serial Nos. 85374805 and 85436615, demonstrated that ”Mott” functioned “primarily merely” as a surname. Unless Mott’s appeals this decision to the Federal Circuit, the two applications will become abandoned. Rules are rules.

The lesson here is that surnames, unless very rare, are not always the best choice for a new trademark. Businesses are better off pushing vanity aside and creating unique trademarks that can more easily and quickly become strong and enforceable assets. Leave the surnames in the family album and create a completely new identity for your business.