As noted in the linked article, many iconic brands, including Ford, Harley-Davidson, and JC Penney (yes, he was real), bear the surnames of their founders. These names often lend a sense of authenticity or legacy that resonates with consumers. But while surname-based branding can have marketing appeal, protecting a surname as a trademark in the United States comes with unique legal challenges.

Under Section 2(e)(4) of the Lanham Act, the U.S. Patent and Trademark Office (USPTO) may refuse to register a mark if it is considered “primarily merely a surname.” The idea is to prevent individuals from claiming exclusive rights in a name that others may share and also wish to use in business.

To decide whether a mark falls into this category, the USPTO looks at several factors, including:

Rarity of the surname. Common surnames are more likely to be refused.
Connection to the applicant. If the name belongs to the applicant or someone connected to them, that may influence the outcome.
Alternative meanings. If the word has another recognized meaning aside from being a surname, that weighs in favor of registration.
Consumer perception. What does the public understand the term to mean?

If an application is refused on the Principal Register and the applicant is not successful overcoming the refusal through arguing the merits, registration might still be an option. One is to show that the surname has acquired distinctiveness and is thus registrable under Section 2(f) of the Lanham Act. If the applicant can provide evidence that the name has become uniquely associated with their goods or services through use, advertising, and consumer recognition it may still be registered on the Principal Register. A long period of use and advertising that points to the name as a brand can help demonstrate that the term is seen as a brand rather than just a surname and, as such, can support registration.

If the mark hasn’t been used long enough to establish distinctiveness, it may nonetheless qualify for registration on the Supplemental Register. While this secondary register provides fewer benefits, it still puts others on notice of the applicant’s claim and can help build rights over time.

Legal disputes over surnames are not uncommon. Just because your preferred brand is your surname doesn't mean that it is necessarily available to you for use. For example, even if your surname is Gucci, it would be difficult for you to use it in connection with just about any goods or services without inviting action from the owners of the famous luxury designer clothing and lifestyle brand.

While not necessarily legal issues, there are also reputational concerns. Even if a surname is legally registrable, the associations that name carries matter. For instance, someone launching a financial services firm would likely avoid names like Ponzi or Madoff. Similarly, the name Trump has become highly polarizing, which can affect brand perception across different markets. Not to mention that the use of the latter name is likely to attract a legal challenge.

Entrepreneurs considering surname-based branding should take a few steps to strengthen their position including conducting a clearance search to assess any risks from existing similar trademarks, investing in brand recognition to build a strong connection between the name and the product or service, and getting legal advice to ensure you’re approaching registration and enforcement strategically.

Using a surname in a brand can add a personal touch and convey credibility, but it’s essential to consider both the legal hurdles and the public associations the name may carry.