Can you stop someone from using your name as a trademark? SCHLAFLY v. St. LOUIS BREWERY

The purpose of a trademark law is to protect consumers. A trademark is a symbol, word or short phrase that identifies the source of a product. When a trademark owner beings branding products with their trademark, they are granted certain exclusive rights to the trademark. A trademark owner can register their trademark with the United States Patent and Trademark Office to strengthen their rights associated with the trademark, but registration is not required for a trademark to be used.

Under United States federal trademark law, it is not possible to get a federal trademark registration from the United States Patent and Trademark Office on a trademark that is primarily merely a surname, or last name, unless you can show that the trademark has acquired distinctiveness. This means that a surname cannot be registered as a trademark unless it can be demonstrated that it has a secondary meaning which consumers associate with the products of the trademark owner. The test for determining whether a trademark is primarily merely a surname depends on the primary significance of the trademark as a whole to the purchasing public.

15 U.S.C. §1052(e)(4) is the portion of United States trademark law which codifies the ban on surname trademarks. The Trademark Manual of Examining Procedure 1211.01 addresses the evidence which needs to be presented by a trademark applicant to demonstrate that a trademark is not merely a surname.

But even when a trademark owner demonstrates that their surname is worthy of trademark protection, people with the same surname may object to their surname being used as a trademark. The question then becomes, can you stop someone from using your name as a trademark?

A case which deals with this issue is SCHLAFLY v. SAINT LOUIS BREWERY, LLC, 2017-1468 (C.A.F.C. 2018). The Saint Louis Brewery SLB is a craft brewery that was founded in 1989 by Thomas Schlafly and Daniel Kopman in St. Louis, Missouri. The brewery began selling beer with the SCHLAFLY trademark in 1991, and asserts that it has continuously sold beer under its SCHLAFLY trademark ever since. In 2011 SLB applied for trademark registration for the word mark SCHLAFLY for use with various types of beer. In its trademark application, the brewery claimed that it has spent $1.1 million in advertising over the last five years and has featured the SCHLAFLY mark in radio, print publications, billboards, social media, and at over 500 events. The United States Patent and Trademark Office found that the brewery presented enough evidence to demonstrate that the SCHLAFLY trademark had acquired distinctiveness and was not primarily merely a surname. The trademark was published for opposition.

Two relatives of Thomas Schlafly filed an opposition to the trademark registration. The opposers claimed the trademark was primarily a surname and that allowing the trademark to be registered would impinge upon their constitutional rights. The Opposers argued that the brewery was required to submit consumer surveys as evidence of secondary meaning. The Trademark Trial and Appeal Board found the evidence presented by the brewery demonstrated that the trademark had acquired distinctiveness in commerce and that a consumer survey was not required. The Opposers appealed to the Court of Appeals for the Federal Circuit.

The Federal Circuit concluded that the trademark SCHLAFLY for beer meets the requirements for registration and affirmed the decision of the Trademark Trial and Appeal Board. Regarding the opposers claims that allowing their surname to be a registered trademark would impinge on the opposers’ constitutional rights, the Federal Circuit did not find the argument persuasive.

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