That’s Not My [Sur]name

In a non-precedential opinion issued this month, the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board affirmed the refusal to register Jos. A. Magnus & Co., LLC’s mark MAGNUS for “whiskey, gin, and distilled spirits” in Class 33, on the ground that the mark is primarily merely a surname under Section 2(e)(4) of the Trademark Act. See In re Jos. A Magnus & Co., LLC, Serial No. 87618554 (January 15, 2020). Under the Lanham Act, a mark that is “primarily merely a surname” may not be registered on the Principal Register, unless the brand owner establishes that it has acquired distinctiveness (or secondary meaning).

Supporting its position that MAGNUS is not primarily merely a surname, the applicant argued that, despite its tradename, Jos. A. Magnus & Co., its website address of www.josephmagnus.com, and its marketing around a historical figure for and around whom its famed JOSEPH MAGNUS® whiskey is named and branded, no individual with the last name MAGNUS is or has been involved in the applicant’s business. Additionally, as evidence that the PTO has previously found MAGNUS not primarily merely a surname, the applicant provided copies of 12 live, third-party registrations on the Principal Register for the mark MAGNUS for a variety of goods/services.

The opinion clearly lays out the prosecution history of the application and some of the factors considered by the Board, including the evidence in the record supporting the applicant’s argument that that the mark is not primarily merely a surname. The Board took care to highlight their prior holding in In re Olin Corp., 124 USPQ 2d 1327, 1330 (TTAB 2017), which explained that “whether the primary significance of an applied-for mark is merely that of a surname is a question of fact that must be resolved on a case-by-case basis.” In reaching its decision, the Board “[found] it significant that the applicant has made and continues to prominently make a connection with a person having the surname MAGNUS,” and observed that the evidence of record did not support a finding of an alternate non-surname meaning.

As the mother of a son whose first name is Magnus, and of a daughter whose name also arguably crosses over from surname to first name, this decision prompted me to contemplate and share some key considerations for brand owners who want to register an arguable surname as a mark:

1. Search baby name websites to check a) if the name has crossed over from surname to first name, b) the popularity of the name in the U.S., and c) any increase in popularity of the name used as a first name over the years (e.g., in 1996, 69 babies per million were given the first name Magnus; by 2007, that number had increased to 116 babies per million; by 2015, the number was 173 babies per million; see: here). According to a 2016 article in the Chicago Tribune, Cleveland Evans, author of “The Great Big Book of Baby Names,” said the crossover of surnames to first names began in Tudor England, “when parents chose surnames of nobility.” The “surname-as-first name practice” snowballed because of the “genealogy craze,” added the CEO of babynames.com and author of “The One-in-a-Million Baby Names Book,” Jennifer Moss. Social Security Administration data and reports from online media groups such as Nameberry and BabyCenter are just a few of the sources that contribute to the year-end lists of the most popular baby names (see here). These lists and others also inform to provide statistics about the increase in popularity of baby names.
2. Search for use of the name by famous people online, e.g., Will Ferrell, Kristy Swanson, and Elizabeth Banks all have children named Magnus; use by celebrities is credited for Magnus’s entrance into the Top 1000 baby names for the first time in 2013 (see: here).
3. Check for other associations with the proposed mark used as a first name, such as historical figures, e.g. Madison (also James Madison’s surname) or Magnus Olafsson, better known as “Magnus the Good”; or literary figures, e.g. Magnus in The Vampire Chronicals; and, depending on the name, double entendres, other possible meanings (e.g., Mason), or English translations that have an alternate non-surname significance, e.g., Flores, which is Spanish for flowers.
4. When submitting third-party registrations for the mark as evidence that the PTO has found the mark not to be primarily merely a surname, consider submitting additional evidence from the prosecution history of those registrations to provide evidence of similar fact patterns and context.
5. In promotional materials containing the name/mark and on the “About” page on their website, brand owners should take care not to create a connection between the mark and any surname significance.