If my trademark is rejected for consisting merely of a surname, can I do anything?

Although overcoming a surname refusal of your trademark application can be challenging, there are options you can consider.

This type of refusal, based on Section 2(e)(4) of the Lanham Act, prohibits registration of marks that are "primarily merely a surname." The inclusion of the word "primarily" is essential here and can offer an opportunity to build a compelling counter-argument.

You can try:

• Demonstrating your mark's secondary meaning,
• Proving that other elements within the mark provide sufficient distinctiveness so the consumers won't associate the mark with being merely a surname,
• Providing evidence of acquired distinctiveness through use in commerce.

However, building a case upon any of these options is not straightforward and may require the assistance of a trademark attorney. It may also include collecting additional evidence, such as consumer surveys.

If all of these options fail, you can seek registration on the Supplemental Register, the secondary register maintained by the USPTO. Marks on the Supplemental Register do not receive the same level of protection as marks on the Principal Register, but they still offer certain benefits.