A Section 2(e)(4) Refusal means that the USPTO believes your trademark is primarily only recognized as a surname. In other words, the USPTO is arguing that consumers will see your trademark, and only think of it as a last name.
It is common for many family businesses to apply for their family’s last name as a trademark, and then receive this Refusal.
So, let’s dig deeper into what this Refusal means.
We’ll first examine each of the 5 factors for this Refusal, and whether you’ll want to argue against the trademark being recognized primarily merely as a surname.
The first factor is whether the surname is rare.
Your Office Action might have provided evidence, such as the number of people in the United States with this last name, from a database in Lexis Nexis.
Maybe there are millions and millions of people with this last name, which means the USPTO has a stronger case.
Or, maybe there’s just a few hundred, in which case the USPTO has a weaker case.
If you believe the number is low, or if you find different evidence for the amount of people in the United States with this last name, you can argue that not many people have this last name. And, if very few people have this last name, then there is a smaller likelihood that people will see this trademark and associate it primarily merely as a surname.
The second factor is whether the applicant or anyone connected with the applicant uses the term as a surname.
Let’s use an example to walk through this second factor.
So, let’s say your last name is SMITH and you filed for the trademark SMITH’S. That makes a stronger case for the USPTO that your trademark is primarily merely a surname because you are connected to the trademark.
But let’s say your last name is Smith but you filed for the trademark JOHNSON’S. Well, if you have no connection with that last name of Johnson’s, and nobody in your company has a connection with that last name, then the USPTO has a weaker case in relation to this one factor.
The third factor is whether the terms have any recognized meaning other than as a surname.
So, let’s say you have the trademark MAHONEY. I would try to figure out whether there is any other meaning for the word MAHONEY.
For instance, I’d try searching the word MAHONEY in the dictionary or encyclopedia to see if there are any other meanings. I’d also consider whether MAHONEY is used as a first name by checking popular baby name websites. Here, I’m not seeing much evidence that MAHONEY has different meanings, or that it is also used as a first name, which means the USPTO has a stronger argument as to this factor.
But let’s say I am trademarking the word EDWARD and I received this refusal. Well, EDWARD is also used as a first name, right? Here, Dictinary.com lists Edward as a “male given name”. And there are plenty of Edwards used as a first name when searching baby name websites.
So, this would mean the USPTO would have a weaker argument as to this factor, and to this overall Refusal, since consumers are likely to associate this term EDWARDS with a first name, too. If I was arguing against this Refusal, I would even attach this Dictionary.com web site as evidence that works in my favor.
The fourth factor is whether it has the "structure and pronunciation" of a surname
In other words, this factor asks whether it looks and sounds like a last name.
This is a case-by-case analysis, but let’s consider the example of MCDONALD’S.
The “MC” or “MAC” prefix is seen in a lot of last names, like MCNULTY or MCSWEENEY. We commonly see or hear“Mc” or “Mac” to begin a lot of different last names, so there is a stronger argument that MCDONALD’S has the structure and pronunciation of a surname.
But let’s consider the word KODAK, which is an uncommon surname.
When you see the word KODAK, it doesn’t really look or sound like a last name, does it? In fact, it seems more like a made-up word! In that case, there is a weaker argument that KODAK has the look and feel of a last name.
Finally, the fifth factor is whether the stylization of lettering is distinctive enough to create a separate commercial impression.
So, what does that mean? Well, some trademarks are highly stylized, and others aren’t.
Let’s say you applied as a standard character mark. This means you didn’t add stylization to your trademark in your application. And, without adding distinctive stylization, you likely don’t have a strong argument that this factor works in your favor.
Now, let’s say you have the trademark FAWCETT. But let’s say I applied with a super stylized way such that each letter was stylized to look like a SINK Faucet.
In that case, the way I stylized it does create a different reaction to the consumer, right? If you looked at the stylized trademark, you’d think of a FAUCET, and be less inclined to think of FAWCETT as a last name. So, in that case, you’d have a stronger argument of this factor working to your advantage.
When considering these five factors, this Refusal is a case-by-case determination by the USPTO. They do not have to prove all of the five factors in order to establish this Refusal.
As a final note, you also want to think of whether you have any additional wording or design elements in your trademark that minimizes the likelihood that consumers will only view your trademark as primarily merely a surname.
Let’s use two examples.
Let’s say I am selling toilet paper, and I have the trademark “SMITH’S TOILET PAPER”. Does the additional wording of “toilet paper” change the analysis? No. Toilet Paper is what you’re selling, so it really doesn’t change the overall impression of your trademark.
But, let’s say you are selling toilet paper and your trademark is SMITH’S ZAZOOMSKI. Does the made-up word of ZAZOOMSKI change the analysis? Yes, it does. It’s a totally made up word that has no relation to what you’re selling such that the trademark no longer is PRIMARILY merely a surname. After all, there’s additional and unique words in your trademark beyond JUST the last name.
So, if you do have any additional words or designs, you want to consider whether the additional words or designs can overcome this Refusal.
So, how do you respond to this Refusal?
One option is to argue against this Refusal.
You’d consider each of the factors above, and argue that your trademark would not be primarily merely recognized as a surname. If you find evidence, such as a dictionary meaning of your trademark that shows that there are meanings beyond just a last name, then you’d upload that evidence in your response.
When you submit your response, you could upload evidence, like an online dictionary web site, as a PDF.
But what happens if you do agree that your trademark is primarily merely a surname?
Take a step back and read the Office Action, and see if you agree with the trademark examining attorney’s decision. If you do, what happens in that case?
Well, you can still register your trademark – EVEN if it is refused as primarily merely descriptive.
How?
First, a common response is amending your application to the Supplemental Register.
Applicants are immediately eligible for the Supplemental if they are already selling their goods or services. Or, they can register to the Supplemental Register at a later time, once they show proof that they are selling their goods or services. For more information on amending to the Supplemental Register, and the benefits of the Supplemental Register, you can watch the Supplemental Register video in the Trademarks Classroom.
Second, you can argue that your trademark has “acquired distinctiveness” under Section 2(f) of the Trademark Act.
What does that mean?
Well, generally, applicants can make a claim or argue that their trademarks have “acquired distinctiveness” when they have prior federal trademark registrations with the same trademark for similar goods and services, they’ve used their trademark for five years in commerce, or if they provide actual evidence of acquiring additional distinctiveness.
For more information on “acquired distinctiveness” claims, you can review the Section 2(f) Acquired Distinctiveness video in the Trademarks Classroom.
As a review, when you receive this refusal, you can argue against this Refusal in your response. Or, if you agree with the refusal, then, -- depending on your particular application – you might consider amending your application to the Supplemental Register or making a claim of acquired distinctiveness.
