Using Names in Beer or Brewery Trademarks

You have a great idea for a beer concept and want to have a catchy name for the beer or brewery, so you decide to use your old uncle Bob’s name. Can you trademark Bob’s name for your beer or the brewery? It depends.

Can You Trademark a Name?

One of the grounds used by the USPTO for refusal to register a mark is Section 2(c): “Consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow.” So, no President Obama Porter, thank you very much. And no use of Bob’s name, if alive, without his written consent filed with the USPTO.

This is also covered in Section 2(e)(4) under descriptive marks for “merely surnames.” Why the prohibition on “mere surnames” serving as marks? Mostly because it is merely descriptive. “John’s Ale” is as merely descriptive as saying “this is my ale.”

There are five elements used in analyzing whether a mark is “primarily merely a surname” and might be refused as merely descriptive:

  1. whether the surname is rare (see TMEP §1211.01(a)(v))
  2. whether the term is the surname of anyone connected with the applicant (see TMEP §1211.02(b)(iv))
  3. whether the term has any recognized meaning other than as a surname (see TMEP §§1211.01(a)–1211.01(a)(vii))
  4. whether it has the “structure and pronunciation” of a surname (see TMEP §1211.01(a)(vi))
  5. whether the stylization of lettering is distinctive enough to create a separate commercial impression (see TMEP §1211.01(b)(ii)).

Where the mark is in standard characters, it is unnecessary to consider the fifth factor. This determination is made from the point of view of American buyers familiar with the foreign language. For example, FIORE – Italian for flower – was held to not be primarily a surname since American consumers would not generally recognize the word in its English translation. So, the more obscure the foreign surname, the more likely the name may pass muster and be registered.

Another consideration in using a name of a person, even a non-living person, is whether the use would impinge on any rights of publicity in the name of a person. Many states passed “celebrity name” rights statutes in the post-World War Two era, which protect the rights of the descendants of famous persons to the use of their ancestor’s names for publicity purposes. Most of those statutes, however, have a time limitation. For example, Oklahoma’s post-mortem celebrity right of publicity statute does not apply to persons who died before January 1, 1936. There are also common-law rights in persons’ names and personas, which vary widely by state.

It would be advisable to always consult with an attorney before attempting to use a name of a person- living or dead – for a trademark for your brewery and beers.