One of the most cherished aspects of Italian culture is the dolce far niente, the art of doing nothing.
It is those celebrated moments of smiles and laughter exchange over lingering cups of espresso or glasses (often bottles) of wine, independent of purpose or agenda that delight the heart and nurture the soul. Such moments are often experience in the open squares and public plazas throughout Italy referred to as my name sake “Piazza”.
If I were a wine producer my experiences with and my affection for the people and plazas named Piazza would compel me to proudly associate my name with my wine or vineyard.
Yet while my affection for my namesake might tempt me to favor using it as the trademark for my “would be” wine or vineyard, it being my namesake alone doesn’t mean it would necessarily qualify for registration under the Lanham Act (15 U.S.C. §1052) .
If the public recognizes Piazza as a surname (essentially because it is commonly used as such) it may not qualify for placement on the principal register in the USPTO, unless over time and through substantial association my name has become known as my trademark; or in short my surname has acquired a secondary meaning.
Moreover even should my surname prove to be unique or rare enough not to require a secondary meaning under the Lanham Act, I still may be prohibited from registering it as my trademark if someone else has already claimed it or a name similar enough in sound and use to it that it may prove to be confusing to the public consumer.
The Trademark Trial and Appeal Board has identified five factors to be considered if a term is primarily merely a surname:
- Is the surname rare (see TMEP §1211.01(a)(v));
- Is the term the surname of anyone connected with the applicant;
- Does the term have any recognized meaning other than as a surname (see TMEP §§1211.01(a)–1211.01(a)(vii));
- Does it has the “look and feel” of a surname (see TMEP §1211.01(a)(vi)); and
- If the stylization of lettering is distinctive enough to create a separate commercial impression (see TMEP §1211.01(b)(ii)).