Under trademark law, there are numerous grounds in which the United States Patent and Trademark Office (USPTO) may issue a trademark refusal. Chapter 1200 of the USPTO’s Trademark Manual of Examining Procedure (TMEP) sets forth a comprehensive list of the substantive grounds for refusal of a trademark application. Generally, if the USPTO identifies grounds in which to refuse a trademark application, the examining attorney will issue a formal Office Action to the trademark applicant. An Office Action is an official letter sent by the USPTO to the trademark applicant setting forth the legal problems with the chosen trademark or with the application itself. Office Actions often require a written response to resolve major legal problems, some legal problems can be resolved through direct communications with the USPTO examining attorney. If you have been issued a USPTO Office Action, do not panic! Our US trademark attorneys can assist. The following discussion will briefly touch on each substantive ground for refusal of trademark application.
Possible Grounds For Refusal Of A Trademark By The USPTO
After a trademark application is submitted to the USPTO for registration, an examining attorney will be assigned from one of its law offices in Washington DC to review and analyze the trademark application. Once the USPTO examining attorney has had an opportunity to review and analyze the trademark application, he or she may issue one or more of the possible trademark refusals below. Again, if you have been issued an Office Action, do not panic! Contact our law firm to discuss your trademark matter.
Refusal On Basis of Ownership Of Trademark;
Refusal On Basis of Failure to Function as a Trademark;
Refusal On Basis of Deceptive Matter and Matter which May Falsely Suggest a Connection;
Refusal On Basis of Flag, Coat of Arms, or Other Insignia of United States, State or Municipality, or Foreign Nation;
Refusal On Basis of Matter Protected by Statute or Convention;
Refusal On Basis of Name, Portrait, or Signature of Particular Living Individual or Deceased US President Without Consent;
Refusal On Basis of Elements in Trademark That Need To Be Disclaimed;
Refusal On Basis of Phantom Elements in the Trademark;
Refusal On Basis of Trademark Composed, in Whole or in Part, of Domain Names;
Refusal On Basis of Effect of Applicant’s Prior Registrations; and
Refusal On Basis of Res Judicata, Collateral Estoppel, and Stare Decisis.
Refusal On Basis of Ownership Of Trademark
A trademark application filed under Section 1(a) (i.e., trademark is in actual use) or Section 1(b) (i.e., trademark is not in use yet (intent to use)) must be filed by a party who is the owner of the trademark or who has a bona fide intent to use the trademark in commerce. The trademark application must include a verified statement that the applicant believes it/he/she is the owner of the trademark sough to be registered. An application that is not filed by the owner is void and will be refused by the USPTO. When an application is filed in the name of the wrong party, this defect cannot be cured by amendment or assignment. If the application was filed by the party who is the owner, but there was a mistake in the manner in which the applicant’s name was stated in the application, this may be corrected. However, the application may not be amended to designate another entity as the applicant. Therefore, it is critical in the trademark application that the trademark owner be properly identified.
Refusal On Basis of Failure to Function as a Trademark
Trademark law requires that the subject matter presented for registration be a “trademark.” Subject matter that, due to its inherent nature or the manner in which it is used, does not function as a trademark to identify and distinguish the applicant’s goods and/or services will be refused registration. For example, the failure of the mark to function as a trademark could be because the mark is merely: a trade name, ornamentation, informational matter, a title of single creative work, names of artists or authors, background designs and shapes, varietal and cultivar names, model or grade designations, universal symbols, hashtags, and repeating patterns. The presence of the “TM” or “SM” symbol next to the mark on the specimen cannot transform an unregistrable mark into a registrable trademark.
Refusal On Basis of Deceptive Matter and Matter which May Falsely Suggest a Connection
Section 2(a) of the Trademark Act is an absolute bar to the registration of deceptive matter. Neither a disclaimer of the deceptive matter nor a claim that it has acquired distinctiveness or secondary meaning can avoid a trademark refusal on the basis that the mark consists of or comprises deceptive matter. A deceptive mark may be comprised of: (1) a single deceptive term; (2) a deceptive term embedded in a composite mark that includes additional non-deceptive wording and/or design elements; (3) a term or a portion of a term that alludes to a deceptive quality, characteristic, function, composition, or use; (4) the phonetic equivalent of a deceptive term; or (5) the foreign equivalent of any of the above. Deceptive marks may include marks that falsely describe the material content of a product and marks that are geographically deceptive. Section 2(a) of the Trademark Act also bars the registration of a mark that consists or comprises of matter which, with regard to persons, institutions, beliefs, or national symbols, falsely suggest a connection with the mark.
Refusal On Basis of Flag, Coat of Arms, or Other Insignia of United States, State or Municipality, or Foreign Nation
Section 2(b) of the Trademark Act bars the registration of marks that consist of or comprise the flag, coat of arms, or other insignia of the United States, of any state or municipality of the United States, or of any foreign nation. Moreover, registration of all such official insignia is barred regardless of the identity of the applicant, that is, the statutory prohibition allows no exception even when the applicant is a government entity seeking to register its own flag, coat of arms, or other insignia. However, trademarks containing elements of flags in stylized or incomplete form will not be barred from registration. In other words, the mere presence of some primary elements of flags, such as the stars and stripes, does not necessarily warrant a trademark refusal.
Flags and coats of arms are specific emblems formally adopted to serve to identify certain governmental agencies/authorities. The wording “other insignia” should not be interpreted broadly, but should be considered to include only those emblems and devices that also represent governmental authority and that are of the same general class and character as flags and coats of arms. Designs that do not rise to the level of being emblems of national authority, or emblems of state or municipal authority, should not be subject to a trademark refusal.
Refusal On Basis of Matter Protected by Statute or Convention
A few federal statutes and regulations prohibit or restrict the use of certain words, names, symbols, terms, initials, marks, emblems, seals, insignia, badges, decorations, medals, and characters adopted by the United States government. These designations are reserved for the specific purposes prescribed in the relevant statute and must be free for use in the prescribed manner. Generally, the statute will define the appropriate use of a designation and will prescribe criminal penalties or civil remedies for improper use.
Refusal On Basis of Name, Portrait, or Signature of Particular Living Individual or Deceased US President Without Consent
Section 2(c) of the Trademark Act absolutely bars the registration of marks that consist or comprise of a name, portrait, or signature identifying a particular living individual except by his/her written consent, or the name, signature, or portrait of a deceased President of the United States during the life of his/her widow, if any, except by the written consent of the widow. This rule recognizes the right and publicity that a living person has in his or her identity and protects consumers against source deception. Whether consent to registration is required depends on whether the public would recognize and understand the mark as identifying a particular living individual. Specifically, a consent is required only if the individual bearing the name in the mark will be associated with the mark as used with the goods or services because the person is either (1) so well known that the public would reasonably assume a connection between the person and the goods or services, or (2) publicly connected with the business in which the mark is used. For purposes of Section 2(c), a name does not have to be the full name of an individual. Section 2(c) applies not only to full names, but also first names, surnames, shortened names, pseudonyms, stage names, titles, or nicknames, if there is evidence that the particular name identifies a specific living individual who is publicly connected with the business in which the mark is used, or who is so well known that such a connection would be assumed.
Refusal On Basis of Likelihood of Confusion, Mistake, or Deception
Section 2(d) of the Trademark Act bars the registration of trademarks that consist or comprise of a mark which so resembles a mark registered with the USPTO, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods and/or services of the applicant, would cause confusion, or would cause mistake, or would cause deception.
A trademark refusal under Section 2(d) is normally based on the examining attorney’s conclusion that the applicant’s mark, as used on or in connection with the specified goods or services, so resembles a registered mark (or pending trademark application) as to be likely to cause confusion. The issue is not whether the respective marks themselves, or the goods or services offered under the marks, are likely to be confused but, rather, whether there is a likelihood of confusion as to the source or sponsorship of the goods or services because of the marks used thereon.
The following two factors are key considerations in any likelihood of confusion determination: (1) The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression; and (2) the relatedness of the goods or services as described in the application and registration(s). The following factors may also be relevant to a determination of likelihood of confusion: (1) the similarity or dissimilarity of established, likely-to-continue trade channels; (2) the conditions under which and buyers to whom sales are made, i.e., “impulse” vs. careful, sophisticated purchasing; (3) The number and nature of similar marks in use on similar goods; and (4) The existence of a valid consent agreement between the applicant and the owner of the previously registered mark.
In assessing the relatedness of the goods or services, the more similar the trademarks at issue, the less similar the goods or services need to be to support a finding of likelihood of confusion. If the trademarks of the respective parties are identical or virtually identical, the relationship between the goods or services need not be as close to support a finding of likelihood of confusion as would be required if there were differences between the marks. Conversely, if the goods or services in question are not related or do not travel in the same or similar trade channels, then, even if the trademarks are identical, confusion may not be likely.
Refusal On Basis of Conflicting Trademarks in Pending Applications
Whenever an application is made for registration of a trademark which so resembles another mark or marks pending registration as to be likely to cause confusion or mistake or to deceive, the mark with the earliest effective filing date will be published in the Trademark Official Gazette (TOG) for opposition. In situations in which conflicting applications have the same effective filing date, the application with the earliest date of execution will be published in the TOG for opposition. Occasionally, conflicting applications will have the same date of filing and execution. If this situation occurs, the application with the lowest serial number will have priority for publication and/or issuance. Action on the conflicting application (or the later-filed application) which is not published in the TOG for opposition will be suspended by the assigned USPTO examining attorney pending the outcome of the earlier-filed trademark application.
Trademarks in applications filed by different parties are in conflict when the registration of one of the trademarks would be a bar to the registration of the other under Section 2(d) of the Trademark Act. Therefore, the term “conflicting application” refers to an application to register a trademark that so resembles the trademark in another application as to be likely to cause confusion. There may be multiple conflicting pending applications. The likelihood of confusion test is used to determine whether the pending trademark applications are conflicting.
Refusal On Basis of Descriptiveness
Marks that “merely describe” the goods and/or services with which the mark is used are not registrable on the Principal Register absent a showing of acquired distinctiveness or secondary meaning. A mark is considered merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services. Similarly, a mark is considered merely descriptive if it immediately conveys knowledge of a quality, feature, function, or characteristic of an applicant’s goods or services. The determination of whether a mark is merely descriptive must be made in relation to the goods or services for which registration is sought, not in the abstract. It is not necessary that a term describe all of the purposes, functions, characteristics, or features of a product to be considered merely descriptive; it is enough if the term describes one significant function, attribute, or property.
The major reasons for the USPTO not registering descriptive marks are: (1) to prevent the owner of a descriptive trademark from inhibiting competition in the sale of particular goods; and (2) to maintain freedom of the public to use the language involved, thus avoiding the possibility of harassing infringement suits by the registrant against others who use the descriptive trademark when advertising or describing their own products.
It is important to note that marks which are deemed descriptive, but may have the ability to acquire distinctiveness or secondary meaning in the marketplace may be registrable on the Supplemental Register. Once it is proven by the registrant that the mark has acquired distinctiveness or secondary meaning in the marketplace, the trademark may be registered on a the Principal Register. Acquiring distinctiveness or secondary meaning in a descriptive mark is often very difficult.
It should also be noted that marks that are generic and deceptively misdescriptive of the good and/or services with which the mark is used are not registrable either. A mark is considered deceptively misdescriptive if (1) the mark misdescribes the goods or services and (2) consumers would be likely to believe the misrepresentation. Generic terms are terms that the relevant purchasing public understands primarily as the common or class name for the goods or services. A generic term, being highly descriptive, is also incapable of acquiring distinctiveness or secondary meaning.
Refusal On Basis of Geographic Significance
Under Section 2(e)(2) of the Trademark Act, a mark that is primarily geographically descriptive of the goods and/or services will be refused registration. Additionally, under Section 2(e)(3) of the Trademark Act, a mark that is primarily geographically deceptive or primarily geographically deceptively misdescriptive of the goods and/or services will also be refused registration. A geographic location may be any term identifying a country, city, state, continent, locality, region, area, or street.
To support a trademark refusal of a mark that is primarily geographically descriptive, the USPTO examining attorney must show that: (1) the primary significance of the mark is a generally known geographic location; (2) the goods and/or services originate in the place identified in the mark; and (3) purchasers would likely believe that the goods and/or services originate in the geographic place identified in the mark.
To support a trademark refusal of a mark that is primarily geographically deceptive or primarily geographically deceptively misdescriptive, the USPTO examining attorney must show: (1) the primary significance of the mark is a generally known geographic location; (2) the goods and/or services do not originate in the place identified in the mark; (3) purchasers would be likely to believe that the goods and/or services originate in the geographic place identified in the mark; and (4) the misrepresentation is a material factor in a significant portion of the relevant consumer’s decision to buy the goods and/or services. A geographic nickname (e.g., “Palmetto State” or “Lowcountry” or “Sunshine State”), or an abbreviation or other variant of the name of a geographic location, is treated the same as the actual name of the geographic location, if it is likely to be perceived as such by the purchasing public.
Refusal On Basis of Surname
Under Section 2(e)(4) of the Trademark Act, a mark that is primarily merely a surname is not registrable on the Principal register absent a showing of acquired distinctiveness or secondary meaning. The test for determining whether a mark is primarily merely a surname depends on the primary significance of the mark as a whole to the purchasing public.
The Trademark Trial and Appeal Board (TTAB) has identified several inquiries to determine whether the public would perceive the mark as primarily merely a surname: (1) whether the surname is rare; (2) whether the term is the surname of anyone connected with the applicant; (3) whether the term has any recognized meaning other than a surname; and (4) whether the term has the structure and pronunciation of a surname. If there is any doubt as to whether a term is primarily merely a surname, the USPTO will resolve the doubt in favor of the applicant.
It is also important to note that if the term has primary significance other than that of a surname, registration should be granted. However, the mere existence of other non-surname meanings of a term does not preclude a finding that the term is primarily merely a surname. Each case must be decided on its own facts. For example, “Frame” and “Mason” each have non-surname meanings and would likely avoid a trademark refusal based on the term being primarily merely a surname. A term with surname significance may not be primarily merely a surname if that term also identifies a historical place or person (e.g., Da Vinci or Caesar).
A combination of two surnames is not primarily merely a surname, unless there is evidence of record showing that the combination would be perceived by the public primarily merely as a surname. A mark that consists of two or more initials preceding a surname generally will not be deemed primarily merely a surname. However, trademarks consisting of a single initial preceding a surname have been held to be primarily merely a surname. If a mark consists of a first name alone, first and last name together, then the name can (depending on the circumstances) overcome the “primarily merely a surname” preclusion. Again, proposed trademarks that incorporate surnames must be analyzed on a case-by-case basis to determine whether it can achieve trademark status as to the registrable matter.
Refusal On Basis of Trademark Not Acquiring Distinctiveness or Secondary Meaning
If a proposed trademark or service mark is not inherently distinctive, it may be registered on the Principal Register only upon proof of acquired distinctiveness or secondary meaning. That is, proof that it has become distinctive as applied to the applicant’s goods and/or services in commerce. Three basic types of evidence may be used to establish acquired distinctiveness or secondary meaning: (1) a claim of ownership of one or more active prior registrations on the Principal Register of the same mark for similar good and/or services; (2) a verified statement that the mark has become distinctive of the goods and/or services through applicant’s substantially exclusive and continuous use of the mark in commerce for at least five years; and 3) other appropriate evidence of acquired distinctiveness (e.g., verified statements, depositions, or other appropriate evidence showing duration, extent, and nature of the use in commerce and advertising expenditures in connection therewith (identifying types of media and attaching typical advertisements), and verified statements, letters or statements from the trade or public, or both, or other appropriate evidence of distinctiveness). Again, to establish acquired distinctiveness or secondary meaning, the applicant must show that, in the mind of the consuming public, the mark is to identify the source of the goods and/or services rather than the identification of the actual goods and/or services.
Refusal On Basis of Elements in Trademark That Need To Be Disclaimed
A disclaimer is a statement that the applicant or registrant does not claim the exclusive right to use a specified term or design of the mark in a trademark application or registration. A disclaimer is generally required when a composite mark (unless it is deemed unitary – such as a telescoped word) contains a generic or descriptive term as associated with the goods and/or services. The purpose of a disclaimer is to permit the registration of a trademark that is registrable as a whole, but contains matter that would not be registrable standing alone. For example, in the trademark “Surf Ranch” for amusement parks in the nature of surfing, the USPTO examining attorney would require a disclaimer for the exclusive right to use “Surf” because it is an unregistrable component.
Refusal On Basis of Trademark Composed, in Whole or in Part, of Domain Names
A mark composed of a domain name is registrable as a trademark or service mark only if it functions as a source identifier. The mark, as depicted on the specimen, must be presented in a manner that will be perceived by potential purchasers to indicate source and not as merely an informational indication of the domain name address used to access a website. A term that only serves to identify the applicant’s domain name or the location on the Internet where the applicant’s website appears, and does not separately identify the source of applicant’s goods and/or services, does not function as a trademark and is unregistrable. Therefore, a trademark refusal on the ground that the proposed mark fails to function as a trademark is appropriate.
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