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How can I overcome a Section 2(e)(4) refusal of my trademark application?

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Written by Tomas Orsula

Senior Trademark Attorney

A Section 2(e)(4) refusal occurs when the USPTO examiner determines that the applied-for mark is primarily merely a surname.

Overcoming a Section 2(e)(4) is challenging, but not impossible. You may consider the following options:

  • Since the key word in this ruling is "primarily", you can try proving the surname/mark has a secondary meaning.
  • In a similar vein, you can highlight additional distinctive elements in the mark that distinguish it from a mere surname, if applicable.
  • You can also look into demonstrating that the mark has acquired distinctiveness through use in commerce if you're already selling under this brand.

Alternatively, you can consider registering the trademark on the Supplemental Register. This would grant you some level of trademark protection, including the right to use the ® symbol. However, this protection is weaker and offers fewer benefits compared to registration on the Principal Register.

Remember that the success of your response depends on the specific circumstances of your case. Seeking professional legal advice and assistance can significantly enhance your chances of successfully overcoming a Section 2(e)(4) refusal.

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