
Trademark - Ineligible Marks and Relevant Grounds for Refusal
New business owners often face challenges when attempting to register a trademark for their new business. This usually happens when the selected trademark falls under one of the categories of trademarks ineligible for registration. While sometimes the proposed trademark is fully ineligible, in other cases it might be possible to achieve registration with small amendments or by following certain steps someone familiar with trademark practice may recommend. Below are a few categories of ineligible trademarks:
1. Deceptive Marks
Registration may be refused if a mark is deemed to be deceptive. Deceptiveness is an absolute bar to registration and therefore, if a mark is deemed to be deceptive, it will be rejected from the registers of the United States Patent and Trademark Office (USPTO). Deceptiveness may be based on a false indication as to the quality, characteristic, function, composition, or use of the product/service associated with the mark. For example, using the word “Gold” for goods like jewelry that aren’t made of gold could be considered deceptive.
2. Marks that Disparage or Falsely Suggest a Connection
If a mark consists of or comprises matter which, with regard to persons, institutions, beliefs, or national symbols, does any of the following: (1) disparages them; (2) falsely suggests a connection with them; (3) brings them into contempt; or (4) brings them into disrepute, the mark is ineligible for registration. For example, when the term included in the proposed mark is unmistakably associated with a specific individual (even if not disparaging of the individual), without such individual’s endorsement or consent, a false connection is suggested.
3. Flags, Coats of Arms, and Other Insignia
Marks that incorporate flags, coats of arms, or other official insignia of the United States, any state or municipality, or any foreign nation are not eligible for trademark protection. Marks that consist of or comprise any simulation of such symbols are also excluded from registration.This is to prevent confusion or the suggestion that a product or service is endorsed by a government entity. Interestingly, flags of former countries, states, or municipalities are not refused registration.
4. Marks Protected by Statute or Convention
Various federal statutes and regulations prohibit or restrict the use of certain terms adopted by the US government or a particular national or international organization. An example would be that the Copyright Act of 1976 includes provisions concerning the use of the letter “C” in a circle – ©, to give notice of copyright ownership. This symbol may not be registered as a trademark. Sometimes, the relevant statute will define the appropriate use of a designation and will prescribe criminal penalties or civil remedies for improper use.
5. Names, Portraits, or Signatures of Living Individuals without consent
Trademarks may be refused registration if they include the name, portrait, or signature of a particular living individual (except by his written consent), or a deceased U.S. president. The name included in the mark does not need to be the individual’s full name, if there is evidence that the name identifies a specific living individual who is generally known or well known in the relevant field. Such marks are generally registrable with the consent of the living individual or the consent of the deceased U.S. president’s estate.
6. Geographic Significance
Marks are ineligible for registration if they include terms that when used on or in connection with the goods of the applicant are primarily geographically descriptive or deceptively misdescriptive of them. Marks are geographically descriptive if the goods or services originate in the place identified in the mark, and purchasers would be likely to believe that the goods or services originate in the geographic place identified in the mark. Marks are geographically deceptive if the goods or services do not originate in the place identified in the mark, and purchasers would be likely to believe that the goods or services originate in the geographic place identified in the mark. For example, use the mark YOSEMITE BEER in connection with beer was held geographically descriptive of beer produced and sold in a brewpub in Merced, California. In re Spirits of New Merced, LLC, 85 USPQ2d 1614 (TTAB 2007).
7. Surnames
Surnames alone do not qualify for trademark registration unless they have acquired distinctiveness through continuous and uninterrupted use in commerce.
Despite a preliminary refusal of registration of a mark falling under one of the above categories, certain amendments to the application, whether to the mark itself or to the description of good and services, could help overcome the relevant objection. However it is important for applicants to be aware of the general categories of ineligible marks when choosing a name, symbol or other element as their trademark. It is also worth noting that, in addition to ineligible marks, other marks, while eligible, may still be refused on other grounds such as likelihood of confusion and other grounds.
