[E-trademarks] Primarily a Surname???

[Simor Moskowitz]

Maybe consider adding a distinctive element to the mark to avoid a surname objection. See, TMEP --

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) .
[Emphasis added]

Simor Moskowitz

.........................................................

Simor L. Moskowitz

Westerman, Hattori, LLP

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________________________________
From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> on behalf of Miriam Richter, Esq. via E-trademarks <e-trademarks at oppedahl-lists.com>
Sent: Tuesday, February 25, 2025 9:34 AM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Cc: Miriam Richter, Esq. <mrichter at richtertrademarks.com>
Subject: [E-trademarks] Primarily a Surname???


All,



I have a client with an uncommon surname who wants to register a mark using his surname. There are five other marks on the register that have passed muster as not primarily a surname because it is rare, but I’m very leery of filing it since it will sort of be in right in the Examiner’s face.



Any thoughts?



Best,

Miriam



Miriam Richter, Attorney at Law, P.L.

Make Your Mark! ®

Trademark, Copyright, and other Intellectual Property Matters
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Wilton Manors, Florida 33305



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