[E-trademarks] Primarily a Surname???

[Sam Castree]

Semi-funny story along these lines.  I once had a mark rejected as
primarily a surname.  The mark was basically like this: ThisWord +
Industry, so like Jones Clothing, LLC or Smith Accounting, Inc.  But not a
name as common as that.  Honestly, the word didn't strike me as a surname
at the time, and it wasn't the name of anyone on the application or
involved with the company.  The examiner's evidence showed a small number
of people having that surname in the U.S., but it didn't seem to me to be a
particuclarly common name.  I was all ready to tell the client that we
should fight the office action...until I saw the name of the examiner.  She
had the surname in question.

I then advised the client to just move to the Supplemental Register for the
time being.

Cheers,

Sam Castree, III

*Sam Castree Law, LLC*
*3421 W. Elm St.*
*McHenry, IL 60050*
*(815) 344-6300*



On Tue, Feb 25, 2025 at 10:07 AM Lara Pearson via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:

> Is it obvious from the evidence you'll be submitting that it's a surname?
> Or is it obvious because the person signing the form has that surname? If
> the latter, is there anyone else in the company who can sign?
>
> Wishing you success!
>
> Lara Pearson, Esq.
> Law Office of Lara Pearson Ltd, PBC & Brand Geek
> 775.833.1600
> Calendly.com/BrandGeek (let's meet)
>
> Creative typoing by iPhone
>
>
>
> On Feb 25, 2025, at 6:34 AM, Miriam Richter, Esq. via E-trademarks <
> e-trademarks at oppedahl-lists.com> wrote:
>
> 
>
> 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!** ®*
>
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