[E-trademarks] Surname as part of composite mark

Fri Nov 8 20:47:15 UTC 2024

Jessica,

I believe TMEP Section 1211.01(b)(ii) will help you.

1211.01(b)(ii)    Stylization or Design Elements
A mark comprised of a word that, standing by itself, would be considered primarily merely a surname, but which is coupled with a distinctive stylization or design element, is not considered primarily merely a surname. In re Benthin Mgmt. GmbH, 37 USPQ2d 1332, 1334 (TTAB 1995) (finding stylized display of term BENTHIN to be a factor weighing against a finding that the term would be perceived as primarily merely a surname). However, the addition of a nondistinctive design element or stylization to a term that, standing by itself, is primarily merely a surname does not remove the term from that category. The primary significance of the mark, in its entirety, would be merely that of a surname. See In re Pickett Hotel Co., 229 USPQ 760, 763 (TTAB 1986) (holding PICKETT SUITE HOTEL primarily merely a surname despite the stylization of the lettering, which was considered "insignificant, in that it is clearly not so distinctive as to create any separate commercial impression in the minds of purchasers of appellant's services").
The display of a term in lower-case lettering does not detract from its surname significance. In re Directional Mktg. Corp., 204 USPQ 675, 677 (TTAB 1979) .

Bob

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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Jessica R. Friedman via E-trademarks
Sent: Friday, November 8, 2024 2:37 PM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Cc: Jessica R. Friedman <jrfriedman at litproplaw.com>
Subject: [E-trademarks] Surname as part of composite mark

[External email]
This is a "d'uh" question, but I've been going around and around with a difficult client and annoying facts, so I'm going to ask it anyway.

Let's say I apply to register a logo that consists of a heart and the name FRIEDMAN. Am I not going to get a surname objection, even though FRIEDMAN is only one component of the logo? And if I can't prove distinctiveness, there is not going to be any way to overcome that objection except by disclaiming FRIEDMAN?

I would love to be wrong here, so please speak up.

Jessica R. Friedman
Attorney at Law
300 East 59 Street, Ste. 2406
New York, NY 10022
Phone: 212-220-0900
Cell: 917-647-1884
E-mail: jrfriedman at litproplaw.com<mailto:jrfriedman at litproplaw.com>
URL: www.literarypropertylaw.com<http://www.literarypropertylaw.com/>

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