How a Last Name Becomes a Registered Trademark After a Section 2(e)(4) Surname Refusal

You are in this situation if the name on your business is a family name, and the examiner's letter answers with a count: how many people in a phone directory or surname database share it, often beside a page from your own website or application showing whose name it is. The refusal cites Section 2(e)(4): the mark is "primarily merely a surname."

Before you argue

Many surname letters also ask whether the name belongs to anyone connected with you. SOSA & CO. did not answer, and its final refusal reminded it that a failure to answer is "an independent ground for refusing registration."

The Supplemental Register (a second-tier register with fewer rights) is the fallback, not a strategy: "A mark that is primarily merely a surname may be registrable on the Supplemental Register in an application under §1 or §44 of the Trademark Act" (TMEP 1211). An intent-to-use application has to show use first: DELISE filed its allegation of use alongside its response and registered there. Our 2(f) playbook covers acquired distinctiveness in depth.

If you decide to fight it: four routes that ended surname refusals

What counts is the name as a whole: "The test for determining whether a mark is primarily merely a surname depends on the primary significance of the mark as a whole to the purchasing public" (TMEP 1211.01). The manual adds that "a mark that is primarily merely a surname is not registrable on the Principal Register absent a showing of acquired distinctiveness under §2(f)" (TMEP 1211). Routes 1 and 2 make that showing; routes 3 and 4 argue the mark is not merely a surname at all.

Whichever you choose, the five-year statement has to be verified (signed as a declaration), and other owners' registrations have to be attached as copies, not just listed.

1. The five-year statement (TMEP 1212.05)

The rule: "For most surnames, the statement of five years’ use will be sufficient to establish acquired distinctiveness" (TMEP 1212.05(a)). The five years are counted back from the claim, not from the filing: use "for the five years before the date on which the claim of distinctiveness is made" (TMEP 1212.05).

When it fits: you have used the name as your brand, substantially alone, for five years before the day you file the claim, and your application's first-use dates say so.

What to file: the one-sentence statement, verified (letters usually print it, and the 2(f) playbook gives the wording), plus a disclaimer of any generic word the letter names. The claim can cover just the surname, as FOSHEE CONSTRUCTION's did. Check your application's first-use dates first: OYLER COACHING's examiner counted from them, not from what the response said.

In their words. OYLER COACHING's next letter: "the dates of use for §2(f) purposes is 2/3/2024, which is only 1 year and 10 months, which is less than five years prior to the date the distinctiveness claim was made."

The pattern: the statement, with the generic word disclaimed where the letter asked, carried all three approved files, the fastest the next day. The refused claim failed on its own application's first-use date, less than five years before the claim, and the file ended on the Supplemental Register.

2. Your own registrations of the name (TMEP 1212.04)

The rule: the examiner may accept "ownership by the applicant of one or more active prior registrations of the same mark on the Principal Register" (TMEP 1212.04). Same means legally equivalent: "A mark is the legal equivalent of another if it creates the same, continuing commercial impression such that the consumer would consider them both the same mark" (TMEP 1212.04(b)).

When it fits: you own a live Principal Register registration of the name for goods buyers would connect with the new ones, even if the new line is too young for five years of use.

What to file: the claim with the registration numbers. Where the connection is not obvious, the manual says the examiner "may not accept the §2(f) claim without evidence and an explanation demonstrating the purported similarity or relatedness between the goods or services" (TMEP 1212.04(c)). FAIRCLOTH filed its registration record, its website and outside pages on how skimmers are used in stormwater work.

In their words. SCOMA'S Office action offered the route itself: "Applicant may amend the application to assert a claim of acquired distinctiveness under Trademark Act Section 2(f) based on ownership of active U.S. Registration No(s). 3811542." FAIRCLOTH's response: "Applicant has been using FAIRCLOTH SKIMMER in connection with the Class 11 Goods since at least 1997". DUNN'S EST. 1927's next letter: "Applicant's bald assertions that the goods are related is insufficient."

The pattern: the accepted claims used registrations of the name for goods that lead to the new ones: seafood to a seafood restaurant, and water skimmers to stormwater services, with evidence. The refused claims relied on a registration with extra letters and an abbreviated word, for live music rather than clothing, and on deli meats for snack chips with a short explanation.

3. The whole mark is more than a surname (TMEP 1211.01(b))

The rule: "If the wording combined with the surname is inherently distinctive (i.e., matter that is fanciful, arbitrary, or suggestive), the mark is not considered to be primarily merely a surname under §2(e)(4)" (TMEP 1211.01(b)(vi)). Two names count as well: "A combination of two surnames is not primarily merely a surname, within the meaning of §2(e)(4), unless there is evidence of record showing that the combination would be perceived by the public primarily merely as a surname" (TMEP 1211.01(b)(i)). The limit: entity and family words such as Co., Inc. and & Sons do nothing, since their addition "does not diminish the surname significance of a term that is otherwise primarily merely a surname" (TMEP 1211.01(b)(viii)).

When it fits: the surname sits beside something buyers read as part of one name: a second family name, wordplay, or a distinctive design.

What to file: argument; the mark itself is the evidence. The manual's limit for designs: a nondistinctive design or stylization "does not remove the term from that category" (TMEP 1211.01(b)(ii)).

A design can keep the refusal from issuing: the logo version of BOWMAN PROPERTIES, the name beside the profile of an archer, drew no surname refusal from the examiner who refused the word version in route 1 the same day (the record does not say why). Lettering alone did not: DUNN'S EST. 1927, in bold cursive, was refused anyway.

In their words. SOSA & CO.'s response: "Consumers are unlikely to perceive the mark as identifying a particular individual, but rather as a brand name." MILLER MARKET's final refusal on its added word: MARKET "does not alter the primary significance of the mark as a whole from that of a surname because it merely describes the provider of applicant's goods."

The pattern: the approved files added something the manual counts: a second FINK, and a rhyme that joins SAWYER and LAWYER into one phrase. The refused files added a word for the business form or the shop (CO., MARKET) and argued commercial impression with nothing more.

4. Another meaning, or a name almost no one has (TMEP 1211.01(a))

The rule: "If there is a readily recognized meaning of a term, apart from its surname significance, such that the primary significance of the term is not that of a surname, registration should be granted on the Principal Register without evidence of acquired distinctiveness" (TMEP 1211.01(a)(i)). History counts: "A term with surname significance may not be primarily merely a surname if that term also identifies a historical place or person" (TMEP 1211.01(a)(iv)). Rarity is a factor, with a limit: "Even a rare surname may be held primarily merely a surname if its primary significance to purchasers is that of a surname" (TMEP 1211.01(a)(v)).

When it fits: your name is also a word buyers know in your field, a historical figure's name, or so rare that buyers are unlikely to have met it as anyone's name. A sound-alike of an ordinary word does not count by itself (TMEP 1211.01(a)(ii)), and fame in your own industry is not history: "Evidence that an individual is famous in a particular field does not necessarily establish that the individual is a historical figure" (TMEP 1211.01(a)(iv)).

What to file: dictionary entries for the other meaning and how it fits your goods; history for a historical name; census or directory counts for rarity, checked against the examiner's own attachments.

In their words. CARNEGIE ENDOWMENT FOR INTERNATIONAL PEACE's response: "the primary significance of CARNEGIE in CARNEGIE ENDOWMENT FOR INTERNATIONAL PEACE is that of the name of a specific well-known person in American history, rather than that of a surname." NAGOSHI's final refusal: "the statute makes no distinction between rare and commonplace surnames and even a rare surname may be unregistrable under Trademark Act Section 2(e)(4) if its primary significance to purchasers is that of a surname."

The pattern: the approved files gave buyers something besides a family to think of: a founder who is now a historical figure, a dictionary word that fits the services, a name the census count put under 100 people. NAGOSHI was rare too, but its examiner tied the name to a living person known in the gaming industry, and THE WRIGHT LAW FIRM's second meaning was the sound-alike kind the manual sets aside.

Arguments that rarely carried a case alone

Entering only the disclaimer the letter asked for. PRESCOTT BRANDS by Prescott Brands LLC disclaimed BRANDS in its response; its final refusal, six days later: "Applicant did not provide a response to the Section 2(e)(4) refusal." STEADMAN MEDIA GROUP disclaimed MEDIA GROUP and had a final refusal three days later. Both were abandoned. A disclaimer answers a disclaimer requirement; the surname refusal needs one of the four routes.

Finding cases like yours

GleanMark's Office Action research (Professional and Max plans) lets you select the "§2(e)(4) Surname" refusal and open real cases like the ones above, each with its Office Action, response and outcome.

This article describes public USPTO records. It is not legal advice; each refusal turns on its own mark, goods and evidence.