Understanding “Primarily Merely A Surname” U.S. Trademark Registration Refusals

The U.S. Trademark Act prohibits a mark that is “primarily merely a surname” from registration on the Principal Register. 15 U.S.C. § 1052(e)(4). The issue is whether the primary significance of the mark as a whole to the purchasing public is as a surname, which is a question of fact.

Are TUGENDHAT or GOLIA unregistrable surnames? (Hint: That may depend, in part, on the Applicant’s own advertising or promotional materials or Applicant’s own name.)

Several non-exclusive questions are considered in evaluating the primary significance to the purchasing public of a surname mark:

1. Is it a principal’s name used in a manner that reveals its significance as a surname;
2. Does the term have an ordinary language meaning;
3. How common or rare is the surname;
4. Does the term have the “structure and pronunciation” or “look and sound” of a surname;
5. If the surname is in stylized lettering, is the stylization o sufficiently distinctive to create a separate commercial impression?

TUGENDHAT Case

Knoll, Inc. filed an intent-to-use application to register TUGENDHAT in block lettering as a mark for “seating furniture.” The Examining Attorney refused registration on the ground that the mark was primarily merely a surname.

The refusal to register was affirmed by the Trademark Trial and Appeal Board (TTAB).

The Examining Attorney submitted Wikipedia evidence that the Tugendhat family was a family of Czech-Jewish textile and oil industrialists, who lived in an architecturally significant building known as Villa Tugendhat and had a chair designed for it known as the Tugendhat chair.

The TTAB concluded that, although Tugendhat is not a common surname, there had been sufficient exposure to the surname in the U.S., particularly since Knoll itself touted the Tugendhat family connection in its own marketing materials, including in an online catalog and at the point of sale. 

The TTAB determined that Knoll could not simultaneously build its brand around a family’s historic legacy and then argue that consumers will not perceive the mark as a surname because the company employs no family member.

Although the TTAB acknowledged that it was inclined to resolve doubts in favor of Knoll, the evidence of record left no doubt that consumers are likely to view TUGENDHAT as primarily merely a family surname.

In re Knoll, Inc., App. No. 98370045 (T.T.A.B. Mar. 30, 2026).

GOLIA Case

Michael J. Golia filed an intent-to-use application to register GOLIA in plain lettering without stylization as a mark for confectioneries and candies. The Examining Attorney refused registration on the ground that the mark was primarily merely a surname.

Mr. Golia appealed to the Trademark Trial and Appeal Board (TTAB), which affirmed the refusal.

The Examining Attorney conceded that the surname Golia is relatively rare, because only approximately 600 people in the U.S. have that surname. However, the record contained evidence of over two dozen articles and website entries referencing inpiduals with the surname Golia, including people in law, the arts, business, and other fields. This showed meaningful and fairly broad public exposure to that surname. 

Mr. Golia cited two GOLIA registrations with translation statements in the record indicating that Golia is the Italian translation of Goliath. However, Mr. Golia himself did not submit any translation statement, there was no evidence that potential customers would stop and translate the mark, and multiple sources identified Golia as a surname.

The Examining Attorney provided listings of other surnames that possess a structure and pronunciation similar to Golia, since they start with GOL, end with IA, or differ from Golia by only one letter. In addition, Applicant’s own last name is Golia. These aspects were viewed to support the Examiner’s refusal.

Accordingly, although the TTAB acknowledged that it was inclined to resolve doubts in favor of Mr. Golia, the evidence of record left no doubt that consumers are likely to view GOLIA as primarily merely a surname.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.