Trademarks, Surnames

Surname Refusals - Rarity Alone Will Not Defeat a Refusal To Register

BakerHostetler on 10/10/2023

A mark that is “primarily merely a surname” cannot be registered on the Principal Register per Section 2(e)(4) of the Trademark Act, 15 U.S.C. § 1052(e)(4). Even though a surname may be rare, in In re Weale Care, LLC, Serial...more

MarkIt to Market® - February 2020: Sussexit: Petty Queens and Trademark Takeaways

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 3/9/2020

Trademark lawyers get excited when trademark protection maneuvers make international headlines; add glamorous royals Harry and Meghan to the mix, and everyone has an opinion on the ramifications of Sussexit and the SUSSEX...more

MarkIt to Market® - January 2020: That's Not My [Sur]name

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 2/10/2020

In a non-precedential opinion issued this month, the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board affirmed the refusal to register Jos. A. Magnus & Co., LLC’s mark MAGNUS for “whiskey, gin, and...more

Descendants of Danish well-known scientist could not prevent the use of his name by a large Danish based stated-owned energy...

International Lawyers Network on 5/16/2019

The descendants of a well-known Danish scientist could not prevent the commercial use of the name ØRSTED as a trademark, domain and company name by the Ørsted Group (former Dong Energy A/S)....more

Choosing Your Brewery/Beer Names and Trademark Searching

Harris Beach PLLC on 1/12/2019

There are several grounds upon which an application for a federal trademark can be rejected, and I will discuss a couple of them here. One important ground is known as mere descriptiveness. One is not permitted to register a...more

What’s in a name? Canada may have just made it more difficult to register name and surname marks

Smart & Biggar on 1/11/2019

The Canadian Intellectual Property Office has recently revised its Practice Notice regarding name and surname objections....more

Surname or Suds? SCHLAFLY Mark Has Acquired Distinctiveness

McDermott Will & Emery on 1/9/2019

The US Court of Appeals for the Federal Circuit affirmed a Trademark Trial and Appeal Board (TTAB) decision that the SCHLAFLY mark had acquired secondary meaning and met the requirements for registration. Bruce S. Schlafly...more

Schlafly v. The Saint Louis Brewery, LLC

Knobbe Martens on 11/29/2018

Federal Circuit Summary - Before Newman, Mayer, and Stoll. Appeal from the Trademark Trial and Appeal Board. Summary: Words that are primarily a surname can be registered as trademarks if they have acquired secondary...more

What’s In a Name?

Burns & Levinson LLP on 2/12/2018

Question: What do Sean Combs, J.K. Rowling, LeBron James, Lionel Messi, and Mark Wahlberg have in common? Two things, actually. First, they are all listed on the Forbes 2017 Celebrity 100 List; second, they all have gone to...more

Following The Earnhardt’s Race To the Courtroom, USPTO Raises the Bar on Surnames

Dorsey & Whitney LLP on 9/27/2017

Last month we reported on the Federal Circuit decision in Earnhardt v. Earnhardt, vacating and remanding the TTAB’s dismissal of the opposition by Teresa Earnhardt (widow of Dale Earnhardt) to the “Earnhardt Collection”...more

Ongoing Family Feud over Earnhardt Name

McDermott Will & Emery on 9/1/2017

Addressing the Trademark Trial and Appeal Board (TTAB) finding that EARNHARDT was not primarily merely a surname, the US Court of Appeals for the Federal Circuit remanded the case to the TTAB to clarify its surname analysis....more

The Earnhardts’ Race To the Courtroom: Who Will Get The Checkered Flag?

Dorsey & Whitney LLP on 8/17/2017

On July 27, 2017, the Federal Circuit decided Earnhardt v. Earnhardt, a trademark collision between two relatives of the famous race car driver, Dale Earnhardt. The case involved an appeal from a TTAB decision between Teresa...more

Navigating the Lifecycle of an Eponymous Brand (Part 3)

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 5/4/2017

In this three-part series, we identified three distinct seasons in the lifecycle of an eponymous brand: (1) Choosing the Brand, (2) Commercializing the Brand, and (3) Legacy of the Brand. In Part 1, we discussed what is at...more

MarkIt to Market® | April 2017

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 5/3/2017

The April 2017 issue of Sterne Kessler's MarkIt to Market® discusses navigating the lifecycle of an eponymous brand and lists the new gTLD Sunrise periods. ...more

Navigating the Lifecycle of an Eponymous Brand (Part 2)

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 4/12/2017

In this three-part series, we identified at least three distinct seasons in the lifecycle of an eponymous brand: (1) Choosing the Brand, (2) Commercialization, and (3) Legacy of the Brand. In Part 1, we discussed "Choosing...more

Navigating the Lifecycle of an Eponymous Brand (Part 1)

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 3/21/2017

In Steven Covey's book, 7 Habits of Highly Effective People, he espouses the idea that "all things are created twice … a mental (first) creation, and a physical (second) creation" (see link here). This idea applies aptly to...more

Trademarking Your Name Can Drive You To Drink: The Risks and Benefits of Naming a Beer After Yourself

Bowditch & Dewey on 3/2/2017

You have worked hard, you are proud of your beer, and you want the market, if not the world, to know that it is your product. At the end of the creative process, like any other artist or craftsperson, you have the urge to...more

The Designer Formerly Known As…Intellectual Property Issues Arising From Personal Names As Fashion Brands

Ladas & Parry LLP on 2/13/2017

Kate Spade, Paul Frank, Joseph Abboud, Catherine Malandrino, and Karen Millen—aside from being well-known designers, all have something else in common; they no longer own the right to use their personal names as their brands....more

What's in a Name?: An Overview of the TTAB's Recent Surname Decisions

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 2/2/2017

Barr. Aldecoa. Hechter. Adlon. Kepler. Butterfields. What do these words have in common, you may ask? They were all recently found to be "primarily merely a surname," and refused registration by the Trademark Trial and Appeal...more

MarkIt to Market® | January 2017

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 2/1/2017

The January 2017 issue of Sterne Kessler's MarkIt to Market® includes an overview of the TTAB's recent surname decisions, the changes made by the USPTO to their trademark processing and services fees, and lists the new gTLD...more

DICKMAN’S Pickles: Just Another Unregistrable Surname

The US Trademark Trial and Appeal Board has, again, explained how and when surnames may function as trademarks. In re Enumclaw Farms LLC, Application Serial No. 85942195 (TTAB June 24, 2016). ...more

A Distinctive Fourth of July: Fireworks and Historical Figure Trademarks

Unless you are Charlemagne or Julius Caesar, you would probably have trouble registering your name as a trademark. This is because personal names are not generally considered to be inherently distinctive enough to qualify...more

More About Trademark Surnames: The Borghese Dispute

Right on the heels of our surname blog comes a New York Times article on a long-running trademark litigation over rights to the Borghese surname. The Borgheses hail from an Italian noble family and their using the family...more

Why Can’t I Use My Own Name?: Trademarks and Surnames

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....more

Trademarks › Surnames

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