How We Overcame a Surname Trademark Refusal—and Helped a Client Secure Their Brand

When people think about reasons a trademark might get rejected, they often imagine conflicts with existing marks or issues with descriptiveness. But there’s another surprisingly common reason that the U.S. Patent and Trademark Office (USPTO) might deny your application: because your brand name sounds too much like a last name.

Yes, that’s a real thing. It’s called a “surname refusal,” and it falls under Section 2(e)(4) of the Lanham Act. If the USPTO determines that your trademark is primarily merely a surname, it can refuse registration on the Principal Register—unless you can prove otherwise.

In today’s post, we’re walking you through one of our recent wins at Tucson Trademarks, where a business owner came to us after trying to file on their own and receiving a Section 2(e)(4) refusal. We helped them overcome it, and they walked away with full trademark protection on the Principal Register.

This post is for anyone who:

• Has received an Office Action for a surname refusal;

• Is considering applying for a trademark that includes a name or surname;

• Or wants to understand how experienced trademark attorneys can step in to reverse a refusal and secure your rights.

Let’s dive in.

What Is a Surname Refusal?

The USPTO will refuse registration on the Principal Register under Section 2(e)(4) if the primary significance of a mark to the public is that of a surname. This refusal is most common when the mark looks and sounds like a last name, even if the applicant isn’t personally connected to it.

Here are a few key things the USPTO considers when making this determination:

• Whether the mark is the last name of the applicant or anyone associated with the business

• How common the surname is

• Whether the mark has another meaning (e.g., a dictionary definition)

• Whether it has the “look and feel” of a surname

• Whether the mark has any meaning in the relevant industry or trade

If the USPTO decides that the term is primarily a surname and you don’t already have acquired distinctiveness (which takes years and consistent brand use), your mark won’t be approved—unless you can show that the primary significance of the word is something other than a surname.

The Client’s Situation: A Refusal After Filing Pro Se

Our client came to us after filing their trademark application on their own. They had created a clever, distinctive brand name that—unbeknownst to them—triggered an Office Action from the USPTO on the grounds that their mark appeared to be “primarily merely a surname.”

It’s not unusual for small business owners or entrepreneurs to start the application process themselves. After all, the USPTO’s website makes it easy to file. But as this client quickly found out, responding to a refusal requires a deep understanding of trademark law, procedural rules, and persuasive legal writing.

They were unsure how to respond and didn’t want to jeopardize their brand. That’s when they contacted Tucson Trademarks.

Step 1: Diagnosing the Refusal

We started by reviewing the Office Action and examining the mark carefully. The USPTO’s position was that the mark “looks and feels” like a surname. But we saw something different:

• The mark had a well-established meaning in science, one that many people would recognize from school or everyday discussions—not just from a family tree.

• The mark was not connected to the applicant or anyone involved in the business.

• It was a rare surname, based on our own LexisNexis research and USPTO records.

• And most importantly, we believed the public would associate the mark first with its non-surname meaning—not with a person’s last name.

In other words, the USPTO’s refusal was based on a rigid reading of the rules—not the true public perception of the mark.

Step 2: Building a Legal Argument

To overcome the refusal, we cited the USPTO’s own guidelines as laid out in the Trademark Manual of Examining Procedure (TMEP), as well as decades of case law that clarified how surname refusals should be evaluated.

We focused on three key legal arguments:

1. The Primary Significance of the Mark Is Not a Surname

Under In re Isabella Fiore LLC, a mark should be allowed registration if it has a readily recognized non-surname meaning that is not obscure. In that case, “Fiore” was found not to be primarily merely a surname because it also means “flower” in Italian—a common word with broad public recognition.

Similarly, we showed that our client’s mark has a clear and widely understood non-surname significance, particularly in scientific and educational contexts. That meaning was not obscure—it was central to the brand’s intended identity and message.

2. The Mark Is Rare as a Surname

We submitted LexisNexis surname frequency evidence and showed that the mark in question appears only a handful of times as a last name in nationwide records. This supported the argument that the public is unlikely to view the term as a surname.

Cases like In re United Distillers plc and Application of Kahan & Weisz Jewelry Mfg. Corp. were persuasive here, demonstrating that rarity can weigh against a surname refusal.

3. There’s No Association Between the Applicant and the Name

We emphasized that no individual associated with the applicant has the surname in question. Courts have consistently held that when the name does not relate to the applicant, it’s less likely to be seen as a surname in the marketplace.

Step 3: Providing Strong Evidence

In addition to legal arguments, we submitted evidence showing:

• Dictionary definitions of the non-surname meaning

• Educational references (including Encyclopedia.com) explaining the concept associated with the mark

• Lack of surname frequency via LexisNexis and USPTO databases

• Absence of connection to the applicant

This combination of legal theory and practical evidence is what often tips the scales in overcoming Office Actions. It’s not enough to say “the mark means something else”—you have to prove it clearly and convincingly.

Step 4: The USPTO Withdraws the Refusal

After reviewing our response, the examining attorney withdrew the refusal—and our client’s application was approved for registration on the Principal Register.

They were thrilled. Their brand is now protected. And they learned that while it’s easy to start the process, it’s critical to bring in an experienced trademark attorney when refusals arise.

Lessons for Business Owners and Entrepreneurs

So what can you take away from this story?

1. Surname Refusals Are Common—but Can Be Overcome

Just because your mark includes a name or sounds like a surname doesn’t mean all hope is lost. If your mark has another clear, recognized meaning—or if it’s rare as a surname—an experienced attorney can often help you overcome the refusal.

2. Don’t Give Up After a Refusal

We’ve helped many clients who filed on their own, only to hit a roadblock when a refusal came in. The good news is that we can often step in, review your application, and craft a strong response—even if things didn’t go well at first.

3. Prevent Problems by Getting It Right from the Start

Of course, the best strategy is to work with a trademark attorney before you file. We can help you assess whether your mark is likely to be refused, search for conflicts, and make sure everything is positioned properly for a smooth approval.

Need Help With a Surname Refusal?

At Tucson Trademarks, we help small business owners, startups, and entrepreneurs protect their brand names and overcome USPTO refusals. Whether you’ve already filed or are just starting your trademark journey, we’re here to help.

Schedule a consultation today to find out how we can secure your brand and move your business forward—with confidence.

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