Question of the day: Bob Silverstein wants to open up a burger joint and sell burgers. Can Bob trademark Silverstein's Burgers?
Answer: Meh... probably not.
Under 15 U.S.C. § 1052, a mark that is primarily merely a surname may be registrable on the Supplemental Register.
This is because exclusive rights in a surname per se cannot be established without evidence showing its significance to the public (i.e., "secondary meaning"). This makes sense because it's not fair to all the Silversteins out there who can't use their name freely without having to worry about trademark infringement. The question of whether a mark is primarily merely a surname depends on its primary significance to the public. TTAB considers five factors on making this determination:
1) Whether the surname is rare;
2) Whether the term is the surname of applicant or anyone related to the applicant;
3) Whether the term has a recognized meaning other than as a surname (e.g., a word in a dictionary);
4) Whether it has the look and feel of a surname;
5) Whether the stylization of lettering is distinctive enough to create a separate commercial impression.
See TMEP Section 1211.01.
So what do you do if your mark is primarily merely a surname but you don't want to wait until your name obtains a secondary meaning? Well, maybe you could add other words, letters, or design to your name. According to TMEP Section 1211.01(b)(ii), "[a] mark comprised of a word that, standing by itself, would be considered primarily merely a surname, but which is coupled with a distinctive stylization or design element, is not considered primarily merely a surname." In re Benthin Mgmt. GmbH, 37 USPQ2d 1332, 1334 (TTAB 1995). The caveat is that whatever words, letters, or design you add must be able to function as a trademark. If you take the above example then, Silverstein's Burgers for burgers would still not be registrable even though Silverstein added the word "burgers" to his name. But if Silverstein added a unique drawing of an elephant riding a bicycle while eating a burger and used the drawing in conjunction with words "Silverstein's Burgers," that might give our friend Silverstein a better shot at registering his mark.
Basically, all this means is that your name is more likely to be registered as a trademark if the mark as a whole is distinctive. Now, this isn't a news to anyone, but sometimes we forget. You know who doesn't forget? Elephants.