Trademark Registration of Surnames

Under federal trademark law, it is not possible to get a federal trademark registration on a mark that would be considered primarily merely a surname, unless you can establish secondary meaning (also referred to as "acquired distinctiveness").  In layman terms, this means that you would have to establish that consumers in the marketplace now view your mark as a reference to your company, and not as a reference to your last name.  Unless you can satisfactorily prove that to the Trademark Office, you will be denied the full protection of federal law for your trademark.

How does the Trademark Office determine whether your mark is primarily merely a surname?  They look to several factors, including whether anyone connected to the trademark applicant has that surname, whether the mark is a common surname, whether the mark has any alternative definitions beyond the surname, and whether the mark has the "look and feel" of a surname.  

I should note that the whole purpose behind the prohibition against the registration of marks that are primarily merely surnames is to keep surnames available for people who want to use their own surnames as part of their business identity.  As always, you should always consult a competent trademark attorney before proceeding with a trademark registration.

About the author:
Xavier Morales is the owner of the Law Office of Xavier Morales, http://www.SecureYourTrademark.com focusing on Trademark Registration and domain name disputes. He can be reached at 1-866-618-2517 or by email: xm@secureyourtrademark.com

Trademark Registration & Corresponding Domain Names

If you own the trademark registration for a particular term or phrase, does that automatically give you the rights to the corresponding domain name?

Not necessarily. When you get a trademark registration, you are ordinarily given trademark rights within your industry. That is, if you are a software manufacturer with a trademark registration for the name PHILOSOPHY PROGRAMS, then you would have the exclusive right to use the name PHILOSOPHY PROGRAMS in connection with software and any kinds of related goods or services. Accordingly, if another company started using the name PHILOSOPHY PROGRAMS to market and sell their religious seminars, you probably would not be able to do anything about it since no one is likely to confuse religious seminars with computer software programs.

The same kind of logic applies to the ownership of domain names. If you have a trademark registration for PHILOSOPHY PROGRAMS for your software products, then you could potentially stop anyone from using PHILOSOPHYPROGRAMS.COM in connection with computer software goods or services. However, if someone owns PHILOSOPHYPROGRAMS.COM and is using it in connection with providing religious seminars, you'd likely be out of luck. The owner of the domain name would likely be able to keep the domain name, and they'd be able to continue using it to promote their religious seminars without any problems.

So in conclusion, if you own the trademark registration, you don't necessarily have any rights to the corresponding domain name. However, you could potentially assert rights to the domain name if, for example, someone else started using the domain name to promote similar kinds of goods/services to those that you're providing, provided that you attained trademark rights to the domain name before the other party's initial use.

These domain name issues can be complicated, and contacting a trademark attorney is usually best for specific legal advice about your case.

About the author:
Xavier Morales is the owner of the Law Office of Xavier Morales, http://www.SecureYourTrademark.com focusing on Trademark Registration and domain name disputes. He can be reached at 1-866-618-2517 or by email: xm@secureyourtrademark.com

Trademark Attorney or General Practitioner?

If you're a small business owner, you probably have some kind of legal counsel. In my experience, most small business owners have the benefit of a local attorney who helps them with the company formation process and general legal and contractual issues. However, most small business owners do not have a trademark attorney for the very simple reason that trademark attorneys are hard to come by in small or mid-sized communities.

The question then arises: "Do I really need a trademark attorney to handle my trademarking issues, or can my local attorney do it?" The answer to this question of course depends on the competency of your local attorney in the field of trademarks. Some general practitioners may have a particular expertise in intellectual property matters, in which case it might make sense to allow your local business attorney to handle your trademarks. However, in the vast majority of cases, the trademark registration process is not one with which your local attorney would be very familiar. Accordingly, it often makes sense to seek the counsel of a licensed trademark attorney before filing a trademark application.

One of the main advantages to having a trademark attorney on your side is the experience he or she has with the U.S. Patent & Trademark Office. A competent trademark lawyer will likely be able to spot potential problems with a proposed trademark right off the bat, sometimes even before conducting a trademark search. For example, if a client were to ask me to help them trademark the term "ROSENBERG" for a line of clothing, I would know to tell them that such a term would likely be rejected by the Trademark Office as being primarily merely a surname, and not an indicator of the source of the clothing. Somehow I doubt I would know this kind of information if I were a contracts lawyer.

About the author:
Xavier Morales is the owner of the Law Office of Xavier Morales, http://www.SecureYourTrademark.com focusing on Trademark Registration and domain name disputes since 2007. He can be reached at 1-866-618-2517 or by email: xm@secureyourtrademark.com