5 Tips to Trade Mark a Logo With a Common Surname In It
In order to register your trade mark, it must be unique enough for IP Australia to differentiate it from other similar brands. However, sometimes, having a common surname in a trade mark you are registering means it will not be unique enough to distinguish your goods or services from others. Therefore, this article will outline five tips for when you are want to register a trade mark with a common surname in it.
Tip #1 Know The Law
IP Australia will deny a trade mark if it cannot differentiate your goods or services from those of other businesses. Therefore, as a starting point, your trade mark must be sufficiently distinguishable.
Tip #2 Think About Why You Want to Register
In some circumstances, IP Australia may consider a surname alone to be a trade mark. This is predominantly if it has been linked with the company through advertising and has developed a secondary meaning.
For example, someone with the surname McDonald could not establish a fast food business based only on their surname.
Tip #3 Understand the Importance of a Trade Mark Surname
Registering a surname as a trade mark is not always viable. However, if it has “acquired distinctiveness,” the business owner may be able to do so.
The acceptance or rejection of a trade mark application is based on the following factors. Whether it:
- is an uncommon surname;
- has anything to do with the individual who is registering it; and
- has a well-known connotation and is associated with a certain service.
Furthermore, when you combine two names, you may find it is simpler to use surnames. This is because the trade mark surname is more likely to be distinctive.
For example, Hall & Wilcox, and Price Waterhouse Cooper, combine surnames for their businesses.
The surname’s historical importance is also a consideration. An uncommon surname linked with a historic trade, for example, has a better chance of IP Australia registering it than a common surname with no particular connection to the company.
Tip #4 Use Your First Name Instead
Whether a name is registrable, like other trade marks, is based on whether it is naturally suited to differentiate the products or services from other businesses. In most cases, you can register a trade mark application for a whole name.
However, if the entire name is a popular name, such as John Smith, someone may bring an objection on the grounds that other traders with no ulterior purpose will be forced to use the name. Therefore, the sort of products or services for which you may seek protection will be necessary for determining whether a registration for a complete name is naturally fitted to differentiate.
Tip #5 Know the 750 Rule
For surnames, if one appears more than 750 times in a database of surnames based on the Australian electoral roll, IP Australia will consider it common. This is because it has a high probability of being used by other traders without malice. For example:
- Williams; and
You may be able to argue for acceptance in some cases. This is especially if the claimed goods or services are specialised or distinctive. Otherwise, IP Australia may require evidence of trade mark usage to show that the trade mark has become distinctive of the trader’s products or services.
There are several compelling arguments that IP Australia should not use the 750 rule as the only criterion for determining registration.
While IP Australia takes the nature of the products and services into account, a result of 750 or more of the same surnames will almost always result in IP Australia objecting in the first instance.
Before deciding to lodge a trade mark application for your logo containing a common surname you should consider:
- whether the Australian electoral roll lists the surname more than 750 times;
- whether your goods and services are distinctive enough when using the surname; and
- if you could use your first name instead (or a combination of your first and last name).
Frequently Asked Questions
The 750 rule relates to the number of times a last name exists. If your surname has been used by other people more than 750 times, then it is likely you will not be able to register your trade mark in your surname.
Section 41 sets out the criteria for obtaining a trade mark over a surname.