Summary: Words that are primarily a surname can be registered as trademarks if they have acquired secondary meaning, even if the public also associates the surname with a famous individual.  

The Saint Louis Brewery (“SLB”) was founded by Thomas Schlafly and began selling beer under the trademark SCHLAFLY in 1991.  In 2011, SLB applied to register the mark SCHLAFLY for beer.  A well-known individual with the same last name and a doctor who used the name Schlafly in his medical practice opposed (“the Opposers”).  The Opposers argued the mark will have a negative connotation due to an association with drinking.  The Board denied the opposition because the mark had acquired secondary meaning.  The Board relied on the continuous use of the mark for more than 25 years, large sales volume, prominent mark placement, and more.  The Opposers appealed.

The Federal Circuit affirmed.  The Opposers argued the Lanham Act prohibits registration of marks that were “primarily merely a surname.”  The Federal Circuit held that words that are primarily a surname can be registered trademarks if they have acquired secondary meaning.  The Federal Circuit discussed typical evidence of secondary meaning, including 1) ownership of prior registrations, 2) five years of substantially exclusive and continuous use in commerce, and 3) other evidence, such as advertising expenditures.  Because SLB presented all three types of evidence and more, the Board did not err in concluding that the mark SCHLAFLY for beers had acquired secondary meaning.  Thus, the Federal Circuit affirmed.