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30 Fordham Intell. Prop. Media & Ent. L.J. 17 (2019).
Article by Russell W. Jacobs*
his Article presents the results of a study using U.S. Patent and Trademark Office (“USPTO”) trademark application records to determine the rates of recognition of surnames held by people belonging to six Asian ethnic groups—Chinese, Filipino, Indian, Japanese, Korean, and Vietnamese. This study follows upon an earlier study that examined a broader dataset of ethnic designations set forth in the 2000 U.S. Census, looking at not just Asian or Pacific Islander names, but also Black, Hispanic, Native American or Alaska Native, and White names. That study looked at the intersection of two sources of data—surnames recorded in the 2000 U.S. Census and trademark applications for those names recorded at the USPTO Since the Lanham Act prohibits trademark registration of a term regarded as “primarily merely a surname,” a refusal to register one of these names under the relevant statutory provision would indicate that the USPTO examining attorney recognized the term as a surname, while an omission of that refusal would indicate that the USPTO examining attorney did not recognize the term as a surname.
This Article looks more deeply into the Asian names included in the original study. To categorize those names into ethnic groups this follow-up study incorporates a data file prepared by Diane Lauderdale and Bert Kestenbaum which identifies the ethnicity for Asian names. The original study disclosed high variation of surname non-recognition across racial and Hispanic origin groups, with White names having the lowest levels of surname non-recognition, followed by Latino, Asian or Pacific Islander, Black, and Native American or Alaska Native names. This study likewise found a high degree of variation of surname non-recognition across the six Asian ethnic groups. Chinese names have the highest levels of non-recognition, followed by Filipino, then Korean, Indian, Japanese, and finally, Vietnamese. The study found no correlation between the names associated with the ethnic groups and the number of trademark filings, percentage of names with a trademark filing, length of surnames, or population of surnames that would explain these differences across ethnic groups.
* Law Faculty, University of Washington, General Counsel and Chief Legal Affairs Officer, National CASA/GAL Association for Children. The author thanks his former colleagues at Starbucks Corporation who provided encouragement and support to him when he wrote this article during his tenure there as Director, Corporate Counsel, Intellectual Property. Special gratitude goes to Starbucks partners Sarah Beggs, Jody Chafee, Anna Kakos, and Yihong Ying. Professor Jennifer Koh provided helpful guidance on the Article as well.