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Trademark Applications to Avoid

Written by: James L Lindon Ph.D.

Reputation Level 9

Intellectual Property Trademarks

Posted almost 3 years ago. 1 helpful vote, 0 comments

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Generic names of the goods

Matter which is merely the generic name of the goods on which it is used cannot be registered. Remember that a trademark is supposed to function as a badge of origin, showing where/who the goods came from will not be allowed. "Apple" brand apples just describe what is being sold.

Immoral, deceptive, or scandalous matter

A mark that consists of or comprises immoral, deceptive, or scandalous matter cannot be registered. "Dirty" words or offensive names will be rejected.

Falsely suggestion of a connection with persons

Proposed marks that may disparage or falsely suggest a connection with persons (living or dead), institutions, beliefs, or national symbols, or bring them into contempt or disrepute will be rejected.

Flag or coat of arms

Proposed marks that consist of or comprise the flag or coat of arms, or other insignia of the United States, or of any State or municipality, or of any foreign nation will not be allowed. There was, however, a recent case that used PART of a Canadian flag that was allowed.

Portrait or signature identifying a particular living individual

Proposed marks that consist of or comprise a name, portrait or signature identifying a particular living individual, except by that individual's written consent; or the name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow will not be allowed.

A mark already registered

Proposed marks that so resemble a mark already registered that use of the mark on applicant's goods or services are likely to cause confusion, mistake, or deception will not be allowed. Sometimes if the goods or services are different enough, the registration may be allowed.

Merely descriptive or deceptively mis-descriptive of goods

Proposed marks that are merely descriptive or deceptively mis-descriptive of applicant's goods or services will be rejected. For example, if your mark mentions leather, and the clothing is not leather, the proposed mark could be rejected.

Geographically descriptive

Proposed marks that are primarily geographically descriptive or deceptively geographically mis-descriptive of applicant's goods or services will be rejected. Basically, try to avoid names of cities and states.

Primarily merely a surname

Common last names like Smith and Jones will be rejected. The question of whether a term is primarily merely a surname depends on the primary significance to the purchasing public. The Trademark Trial and Appeal Board has identified five factors to be considered in making this determination: (1) whether the surname is rare (see TMEP §1211.01(a)(v)); (2) whether the term is the surname of anyone connected with the applicant (see TMEP §1211.02(b)(iii)); (3) whether the term has any recognized meaning other than as a surname (see TMEP §§1211.01(a) et seq.); (4) whether it has the "look and feel" of a surname (see TMEP §1211.01(a)(vi)); and (5) whether the stylization of lettering is distinctive enough to create a separate commercial impression (see TMEP §1211.01(b)(ii).