[E-trademarks] Primarily a Surname???

Tue Feb 25 19:01:19 UTC 2025

So you didn’t try to convince the examiner how special her name was? 😉 Seriously, though, great story.

Kevin Grierson

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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Sam Castree via E-trademarks
Sent: Tuesday, February 25, 2025 1:49 PM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Cc: Sam Castree <sam at castreelaw.com>
Subject: Re: [E-trademarks] Primarily a Surname???

EXTERNAL EMAIL
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<mailto: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<mailto: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! ®
Trademark, Copyright, and other Intellectual Property Matters
2312 Wilton Drive, Suite 9
Wilton Manors, Florida 33305

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