Trademarking Your Surname

Your Business Name is Your Name

So you’ve finally decided to start your photography business. You’ve got your camera, you’ve got a portfolio, you’ve got some clients, but you don’t have a name - that is, you have your own name, of course, but can you use your name for your business? And much more importantly, can you trademark your own name? The answer is that you can, but it may be more difficult than you think.

Understanding Trademark Requirements

To understand why, let’s quickly revisit trademark first principles. The purpose of a trademark is to identify you and your products to your customers. Trademarks should be as distinctive as possible; that is, your mark should identify you and your products, distinguish you from your competitors, and indicate the source of your products and services to your customers. Customers should be able to take one look at your mark and know who you are and what you do, and if there is some reasonable chance that customers will be confused between you and your competitors, the Patent and Trademark Office (USPTO) will refuse to register your mark. There is good reason for this: a properly registered mark allows you to use your mark exclusively.

The Common Problem

You can guess the trouble when it comes to exclusivity and personal names - the USPTO is very reluctant to give one person the exclusive right to use “John Smith” as a business name, over every other business in the United States. There are just too many John Smiths in the United States, and giving one of them an exclusive right would be both unfair to every other John Smith and extremely confusing to customers legitimately searching for any other John Smith.

Show There Is Something More To Your Name

For this reason, the USPTO requires that anyone attempting to register a personal name as a trademark must show that the name has acquired a secondary meaning - that is, that customers have begun to associate your products or services with your name, instead of just you. You can try to show evidence that your customer base has begun to assign a secondary meaning to your name, and sometimes a name by itself can pass the threshold - names like Ralph Lauren or Sarah Palin (yes, she has registered her name as a service mark). But most names by themselves will not have the necessary degree of distinctiveness, and the USPTO will apply a series of factors to determine if your proposed mark is “merely a surname.” The rarity of the name matters - a name like Chemerinsky will have a better chance of being registered than Smith - and whether the name looks or sounds like a name at all will matter - if your last name for some reason is Trashbag or Chalkboard, you may have a better shot as well. It also matters if the proposed name has a “significant non-surname meaning,” like Baker or Bird, or if the name is stylized somehow in its presentation. But this last factor gives us a clue to the easiest way to up your chances that your personal name will be registered - the context.

The whole point of the secondary meaning requirement is to make sure that your customers know you for your business, not just for your self. In this sense, the USPTO has consistently drawn lines between applications that simply state a name, and applications that state a name in the context of the business. For example, a professional boxer tried to register his nickname “Boom Boom,” but was denied because the mark only identified him himself, and not his services as a boxer (In re Mancino, 219 USPQ 1047 (TTAB 1983)); whereas an application for the mark “Corky the Clown” was accepted because the mark stated not just Corky’s name, but also his profession as a clown (In re Florida Cypress Gardens, Inc, 208 USPQ 288 (TTAB 1980)). Thus, one of the best ways to increase your chances that your personal name will be allowed as a mark is to include what you do - not just “John Smith” but “John Smith Photography” or “John Smith Photo Services” or “John Smith, Camera Warrior.” This isn’t foolproof, of course, and it won’t protect you against other photographers named John Smith, but it will increase your chances that your registration will be accepted by the USPTO.

However, if you really are only using your surname as your photography business name and want to get it trademarked, a way to show secondary meaning is by submitting evidence that proves people think (or are likely to think) of photography when they hear your name. Evidence of this would include the number of Instagram followers your business page has, how many “likes” a particular image gets on your Facebook Business Page, how many photography awards you’ve won, and where your work has been published.

An attorney can’t help you determine whether the name you pick is distinctive, and therefore eligible for federal protection through registration with the USPTO, and they can help you through the complex and tooth-gnashing process of trademark application. Don’t hesitate to get help protecting your right to use your own name in your business.

Originally published April 23, 2018 in Rangefinder Magazine