By David Jones
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It is not uncommon for a business owner to name their business or a product after themselves. You can see examples every day nearly everywhere you look: FOLGERS® coffee, FORD® cars, GOODYEAR® tires, DISNEY®. . . everything. However, registering your name as a trademark can actually be quite difficult.
As a starting point, the United States Patent and Trademark Office (USPTO) will not register a mark that is primarily merely a surname without a showing of acquired distinctiveness. 15 U.S.C. § 1052(e)(4). This provision in the Trademark Act reflects the common law idea that exclusive rights in a surname cannot be established without evidence of long and exclusive use, with the idea being that such long-standing and recognizable use changes the significance to the public from the term being merely someone’s last name to being a trademark that identifies particular goods or services – hence, “acquired distinctiveness.” But surnames are not always unique. Can an individual stop someone else from using “their” surname?
The Schlafly case
The Federal Circuit most recently considered the issue in the matter of Schlafly v. Saint Louis Brewery, LLC, No. 2017-1468, 2018 WL 6168685, at *1 (Fed. Cir. Nov. 26, 2018). In its opinion, the Court affirmed a ruling by the Trademark Trial and Appeal Board (TTAB) that the Saint Louis Brewery was entitled to register the mark SCHLAFLY for use in connection with beer and other related goods. In so holding, the Court dismissed consolidated oppositions mounted by the successors of noted conservative political activist Phyllis Schlafly and other members of her family (including a son who used the Schlafly name in connection with his medical practice) in which they argued that allowing the brewery to register the mark would adversely impact their interest in the commercial value of the Schlafly name.
The Court declined to adopt a novel test proposed by the Schlafly camp (which opposers referred to as the “change in significance” test) under which they argued a surname could not be registered without the applicant showing that there was a change in significance to the consuming public that shifted the public’s perception of the proposed mark from a surname to a trademark associated and identified with specific goods and/or services.
The trademark owner’s evidence of acquired distinctiveness
In support of its position, the brewery presented evidence showing its considerable, continuous, wide-ranging use of the SCHLAFLY mark, including the sale of 75 million units of its 60 types of beer using the SCHLAFLY mark in 15 states and the District of Columbia, through 30 wholesalers and some 14,000 retail establishments, including several national restaurant chains between 2009 and 2014 alone. The brewery also presented evidence that these sales were supported by $1.1 million in advertising over the last five years, which featured the SCHLAFLY mark in advertisements and promotions in several media and at events.
Ultimately, both the TTAB and the Federal Circuit found the evidence presented by the brewery sufficient to show that the brewery’s use and promotion of the SCHLAFLY mark supported a finding of acquired distinctiveness. “No law or precedent suggests that surnames cannot be registered as trademarks if they have acquired distinctiveness in trademark use.” Id. at *5. As you can see, however, obtaining a registration for your name as a trademark can be challenging, and anyone considering doing so should be sure to consult with an attorney before moving forward.