Surnames as Trademarks: 3 Tips for family businesses

Many family businesses may choose to use their family surname in connection to the goods and services they are selling, making it a valuable asset worth protecting legally. By registering their surname as a trademark, a family business can prevent others from using their name in a way that could be confusing or misleading to consumers. However, it's important to note that registering a surname as a trademark can be a complex and sometimes contentious process, especially if there are other businesses or individuals with the same or similar name.


Igor Demcak

Family business is a very common business model around the world. In fact, it's estimated that family businesses make up the majority of all businesses worldwide. They can take many different forms, from small, local shops and restaurants to large multinational corporations. They are typically owned and managed by one or more family members and may be passed down from one generation to the next.

One of the advantages of the family business model is that family members may have a shared vision for the business and a strong sense of loyalty and commitment. Family businesses may also have a more long-term perspective and be more willing to make investments in the future of the business.

However, family businesses can also face unique challenges, such as those related to succession planning, ownership disputes, and conflicts among family members. A recent example of that was the trademark dispute between Luka Dončić, Slovenian professional basketball player for the Dallas Mavericks of the National Basketball Association (NBA), and his own mother. It's important for family businesses to have a clear understanding of their strengths and weaknesses and to develop effective strategies for addressing these challenges.

Ownership disputes

In some cases, multiple family members may have ownership claims over the family business, including its trademarks. This is because family businesses may have a more informal approach to managing their trademarks, and ownership and management rights may not be clearly defined in writing. This can lead to confusion and disagreements over who has the right to use and control the family name and other trademarks associated with the business.

Tip: To address ownership disputes, it's important for family businesses to have a clear ownership structure and to document ownership and management rights in a written agreement. This agreement should address how trademarks associated with the business will be owned and managed, and how disputes over ownership will be resolved.

Lack of distinctiveness

Surnames can be challenging to register as trademarks because they are often considered to be "descriptive" or "generic" in nature. This means that they simply describe a person or family, rather than serving as a unique identifier for a specific product or service.

In order to register a surname as a trademark, the applicant must demonstrate that the surname has acquired "secondary meaning" in the minds of consumers. This means that the surname has come to be associated with a specific product or service, rather than just with the person or family that bears the name. This can be difficult to prove, especially for common surnames that may already be associated with many different people or families.

Tip: In general, the key to successfully registering a surname as a trademark is to demonstrate that the surname has acquired a distinctive meaning in the minds of consumers, and that it is not simply a descriptive or generic term. This can be achieved through strong branding efforts and careful use of the trademark in commerce.

Dilution or misuse of trademarks

Family businesses may also face challenges related to the dilution or misuse of their trademarks. For example, a family member who leaves the business may continue to use the family name in a way that dilutes the value of the trademark, or a family member who is no longer involved in the business may try to sell products or services using the family name without permission.

Tip: Family businesses should monitor their trademarks for unauthorized use and take steps to enforce their trademark rights. This may include sending cease and desist letters, pursuing legal action against infringers, and using social media and other channels to educate the public about the proper use of the family name and other trademarks associated with the business.

By developing a comprehensive strategy for addressing these trademark challenges, family businesses can protect their brands and ensure the long-term success of their businesses. Working with an experienced trademark attorney can also help family businesses navigate these challenges and develop effective strategies for protecting their trademarks.

Igor Demcak
Igor Demcak

Trademark Attorney

Founder & CEO of Trama

7 year experience in IP protection

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