Understanding “Primarily Merely A Surname” U.S. Trademark Registration Refusals

The U.S. Trademark Act prohibits a mark that is “primarily merely a surname” from registration on the Principal Register. 15 U.S.C. § 1052(e)(4). The issue is whether the primary significance of the mark as a whole to the purchasing public is as a surname, which is a question of fact.

Are TUGENDHAT or GOLIA unregistrable surnames? (Hint: That may depend, in part, on the Applicant’s own advertising or promotional materials or Applicant’s own name.)

Several non-exclusive questions are considered in evaluating the primary significance to the purchasing public of a surname mark:

1. Is it a principal’s name used in a manner that reveals its significance as a surname;
2. Does the term have an ordinary language meaning;