Can I trademark my last name?

The short answer is, “Generally, no.”  People try it all the time, and the United States Patent and Trademark Office politely rejects the applications and keeps the filing fees.  If you disagree with the Trademark Office’s rejection, or if you think someone else is trying to grab your surname for a trademark and you want to file an opposition to their application (or even seek to cancel their mark if it has already registered), you can take it up with the Trademark Trial and Appeal Board, or TTAB.  Trademark litigation is a specialized type of practice that runs a bit like a federal court trial, though most of it happens in writing rather than “live and in person.”  A good illustration of this is the recent (January 7, 2013) case that pitted Mitchell Miller d/b/a The Miller Law Group against Michelle Miller d/b/a, you guessed it, The Miller Law Group.

Michele Ballard Miller, d/b/a Miller Law Group filed an application to register the mark MILLER LAW GROUP (with “LAW GROUP” disclaimed) for “legal services.”  While the examining attorney initially allowed the application, Mitchell Miller, a Professional Corp. d/b/a Miller Law Group, P.C. filed an objection and ultimately won the day, preventing the registration.

To be clear, what a trademark registration essentially does is to prevent anyone who comes after you from using an identical or confusingly similar mark in a way that consumers are likely to confuse the newcomer’s goods or services with yours; in other words, to ride on the coattails of your brand identity.  Now, when it comes to surnames, it would be rather unfair to let someone trademark their name (which might also be your name) in connection with their product or service, effectively preventing you from using your name (if it happened to be the same) to advertise your business.  In other words, “Mrs. Jones’ Cake Shop” ought not to be allowed where no future Mrs. Jones can could call her cake shop after herself.

When someone tries to register a mark that looks or sounds like a surname, TTAB essentially tries to put itself in the mind of an average member of the public and asks whether the proposed name sounds like a unique brand name or, well, a common or garden surname.  Typically, this involves asking whether the surname is rare; whether anyone connected with applicant has the trademark as a surname; whether the term has any other recognized meaning; and whether the term has the “look and feel” of a surname.

In the Miller case, the surname is hardly rare; in fact, the court noted that it was the sixth most common US surname in the 2000 census and certainly not an unusual name for attorneys.  Of course, Michele Miller has “Miller” as her surname, so that would tend to lead people to think that “Miller” in “The Miller Law Group” designated a particular person and not merely a “brand.”  True, “Miller” has other recognized meanings (someone who operates a mill, for example), but the Board was not persuaded that other potential meanings of “Miller” spring immediately to mind when you see “Miller Law Group.”  And finally, while the “look and feel” test is somewhat subjective, there was little doubt in this case that “Miller” has the look and feel of a surname.

Incidentally, what surname might not have the “look and feel” of a surname?  Consider, for example, the surname “Miracle.”  There is a trademark “Miracles Fitness,” which, although it is not owned by anyone named “Miracle,” may well have passed the test in not calling to the consumer’s mind the name of the owner if it had, in fact, been owned by a Ms. Miracle.  As one witness noted in the hearings that lead to the Lanham Act (on which modern trademark law is based), almost every word you can think of is somebody’s surname.  And it was certainly not the intent of Congress to prevent registration of all trademarks that could be a surname, merely to keep common names available for their owner’s use and to respect the common-law right of people to use their own name in advertising their own businesses.

One way around a refusal to register your name as a trademark is to make an argument that the use of the name has “acquired distinctiveness” through your substantial and exclusive use if it as a trademark in connection with your products and services.  Michelle Miller couldn’t pass this test (there are, of course, many, many lawyers named Miller providing legal services under that name), but consider, for example, “Kimberly-Clark,” which certainly has the look and feel of a surname but has come to identify that company’s products through its widespread, substantial and exclusive use in connection with such products.

Unlike many courts, TTAB allows a company to represent itself in Board proceedings without hiring a lawyer.  Of course, you can also put on a helmet and jersey and walk onto the field to face the Atlanta Falcons… but is that really such a smart thing to do?  Trademark and intellectual property law is a specialized practice area, and failing to retain an experienced trademark and intellectual property attorney can be an expensive mistake.  Michelle Miller’s case took more than five years to work its way through the process, from her original trademark application to TTAB’s final rejection, so clearly the consequences of a bad decision are not quick or cheap.

Bottom line: Consult an experienced trademark attorney as you develop a name for your product or service… and certainly do so before you attempt to register it as a trademark.

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One comment on “Can I trademark my last name?

  1. sasaka says:

    Reblogged this on thesikri.

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