Trademark law says you can't register a trademark that is "primarily merely a surname." So if your mark was FITZGERALD you would get a refusal if you tried for a federal registration.
But what if your mark was P.J. FITZGERALD?
According to the Trademark Trial and Appeal Board (TTAB), that would be OK. On June 11, 2010 the TTAB issued an opinion finding that P.J. FITZGERALD, INC. is not "primarily merely a surname."
Here are some excerpts from the TTAB's opinion:
“Merely” is synonymous with “only,” and “primarily” refers to “first in order” or “fundamentally.” Thus, we must determine whether P.J. FITZPATRICK, INC. is fundamentally only a surname.
There is no doubt that FITZPATRICK alone is primarily merely a surname. There is also no doubt that P.J. FITZPATRICK, INC. is clearly more than just a surname. However, the issue is whether the proposed mark, under the law, is primarily (i.e., fundamentally) only a surname. The law is settled that the mere addition to a surname of an entity designation such as “INC.” does not transform the surname into a mark.So adding "Inc." will never turn a mark that is primarily merely a surname, into a registrable trademark.
But adding two initials seems to do the trick:
We find that in this case the initials P.J. coupled with FITZPATRICK would be perceived as the given name. Thus, P.J. FITZPATRICK, INC. cannot be primarily merely a surname because it comprises an entire personal name, not “merely” a surname.How about adding only one initial? The TTAB left that door open. They didn't come right out and say that's not good enough (though your case certainly would be weaker than if you had two initials); they just said it will depend on the overall commercial impression and facts of the specific case.
Copyright 2010 Elizabeth T Russell. Blog content is not legal advice.
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3 comments:
An interesting result - I was always taught that a name can't be trademarked or copyrighted.
Although adding "INC" on its own isn't enough, I presume its presence is still vital (so similarly PLC, LLP, LTD etc), otherwise it would simply be trademarking a name?
I'm reminded of a person I know who signs his emails with his name, followed by "™" and "©", and a whole paragraph about how unauthorised use of his name will result in action for infringement of copyright...
Well, names in general are not subject to copyright protection because copyright doesn't protect short phrases or titles. But they can serve as trademarks if they come to be indicators of source for particular goods/services.
So good luck to that person who claims that use of his name is copyright infringement! He might have other claims if you use his name, but copyright is not one of them.
As for the entity designation (inc., etc.) I think it's rare that such a designation would ever serve as an essential element of a trademark. Sometimes, yes. But most often the public doesn't associate the goods/services with the type of entity the provider has chosen.
Oh, and the prohibition isn't on trademarking a "name;" it is on trademarking what is "primarily merely a surname." Surname is the key here. If it's a complete name, you're not automatically out of luck.
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