What is Section 2(e)(4) Refusal - Primarily Merely a Surname?

Photo of Tomas Orsula

Written by Tomas Orsula

Senior Trademark Attorney

If you've received a Section 2(e)(4) refusal, it means the USPTO is denying the registration of your trademark because the mark primarily serves as a surname and not as a source indicator.

This type of office action is relatively rare but difficult to overcome. Strategies may include:

  • Proving the surname/mark has a secondary meaning.
  • Proving the mark has gained "distinctiveness through use". If you can prove your mark has already acquired distinctiveness in the market (by submitting evidence in the form of sales and advertising materials, market research, etc.), it can show the public is associating the mark with provided the goods and services rather than the surname contained within the mark.
  • Registering the trademark on the Supplemental Register, which would grant you some level of trademark protection, however weaker.

However, sometimes, the applicant may choose/have to abandon the application and retry with a different mark. It is still possible to register a mark that contains a surname; however, the elements (literal or graphical) you combine it with have to provide a high level of distinctiveness to the overall mark.

The chances of overcoming a Section 2(e)(4) refusal depend on multiple factors, including the actual mark. If you received a refusal on the grounds of your trademark being seen as primarily merely a surname, it's advisable to consult a trademark attorney who can advise on the best course of action.

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