Grounds for Refusal of Trademark Protection
The grounds for refusal of trademark protection are largely based on improper subject matter content, which can be a complex and confusing area of law to navigate. According to the Lanham Act Section § 1052(e) and (f), marks that are merely descriptive or deceptively misdescriptive, primarly geographically descriptive and misdescriptive, functional and are surnames will be refused registration. Also merely descriptive and generic trademarks are never given protection.
Used Solely as a Trade Name
Trade names is the name of the business or company and are not protected; whereas trademarks are the symbols, words, design or other mark affixed that identify the source of the goods or services. The examining attorney reviewing the specimen will look at the way the mark is being used and the impact on the consumers. An important policy underlying trademark law is to prevent consumer confusion, so if the name on the goods will most likely make the consumers think the name is solely giving the information for the business or company (i.e. contact information, return address label or identification purposes), then the name is being used solely as a trade name. If an applicant attempts to register a whole or partial trade name and it is not being used as a trademark as well, then the examining attorney will refuse registration.
A trademark cannot serve as a functional feature of goods and services provided. Another important policy of trademark law (and of most Intellectual Property law) is to maintain the proper incentives for fair competition. Therefore, providing protection for marks that are a functional feature of the goods and services would prevent other from using the mark in the same manner and hinder free and fair competition. Essentially, a utilitarian product feature should be filed as a patent application that deals with functionality and has a limited duration, rather than trademark law that deals with aesthetics and source identification aspects of marks.
A mark is a functional feature when it is central to the use or purpose or it affects the cost or quality of the goods/services provided. Even if the mark is not functional in this sense, the examining attorney will ask the final question of whether approving this mark would put other competitors (in the same market) at a significant non-reputation related disadvantage (“aesthetic functionality”). If the examining attorney decides that the applicant’s mark is functional, then it is an absolute bar for trademark protection. An example of the difference may be a water bottle design. If a company attempts to register a particular design of the bottle that consumers would associate with the company who sells water using this particular water bottle design, then the design may be protected as a trademark. However, if the examining attorney has enough evidence that this water bottle design can be and is used because it improves the drinkability of the water or keeps the water aerated better, then the design is a functional feature of the bottle and will not be given trademark protection. An applicant will have an opportunity to refute the examining attorney’s determination of functionality, but it is a very difficult burden to disprove their findings.
On Basis of Ornamentation
A decorative feature that does not help consumers identify and distinguish the source of the goods from another, is not a trademark and therefore will not be protected. For example, smiley faces, the peace symbol or “Have a Nice Day” are generally not considered trademarks as they are merely decorative or ornamental.
Scandalous and Immoral Marks
Marks that are immoral or scandalous will not be protected. Immoral or scandalous marks are those that should be condemned, offend the conscience or morals, or are vulgar or lacking in taste. An example of a mark held to be scandalous was a picture of a nude man and woman embracing a kiss for a newsletter for social and relationship topics.
The determination of whether a mark is deceptive is a little more complex. There are three key questions with which the examining attorney uses to make the determination. First, a mark is misdescriptive if it does not correctly describe the character, quality, function composition or use of the goods. Secondly, if the term is misdescriptive and the consumers are likely to believe the misdescription actually describes the goods attached, then the mark is deceptively misdescriptive. There is not an absolute bar for misdescriptive or deceptively misdescriptive marks if the applicant can show that these marks have acquired secondary meaning. If these marks have acquired secondary meaning (in the eyes of the consumer), then the marks have become distinctive and protectable because the mark can identify and distinguish the source of the good attached for the consumer.
Lastly, if the first two questions are answered affirmatively (so the mark is deceptively misdescriptive) and the misrepresented fact is material to the reasonable consumer’s purchasing decision, then the mark is deceptive. For example in Lovee Lamb Seat Covers, the company produced car seat covers that were not made out of lamb materials and their mark was found to be deceptive. Some factors examining attorneys use in determining the misrepresented fact is a material factor affecting the consumer’s purchasing decision are (not a conclusive list):
- Quality: the goods/services have a feature that is of a higher quality than others (i.e. silk). Presumably, consumers are more likely to buy a product of higher quality.
- Function: the goods/services have a characteristic or functional feature that is of a higher quality than others (i.e. rust resistant metal). Presumably, these features would encourage people to buy these products over others.
- Price: the price difference between other items that have and do not have the higher quality feature or function compared against the misdescribed goods.
- Benefits: if the feature or characteristic provides a health benefit, then presumably, consumers would be more likely to buy these goods/services over others.
- Religious Practice or Social Policy: if the goods/services serve a particular religious or social purpose or not; for example, non-kosher foods labeled kosher or foods labeled organic that are not.
A geographical mark (i.e. California Innovations) is a deceptive mark if it is incorrectly describes the source of the goods, consumers are likely to believe the misdescription (a deceptively misdescriptive mark) and the misrepresented fact was a material factor in the consumer’s purchasing decision. It is the same test for determining whether non-geographic marks are deceptive, but these marks refer to the names of places, so the consumer would mentally associate the goods with the place. For example, a court held that the mark LONDON LONDON for clothing not made in London was deceptive because consumers generally know or think high quality clothing comes from London and so they were more likely to buy the clothing with LONDON LONDON. In a way, the LONDON LONDON mark’s deception would enable the company to take advantage of the consumer’s misbelief and of a reputation that they did not help to create.
On basis of Likelihood of Confusion or Mistake
A registration bar based on the likelihood of consumer confusion or mistake as to the source of the goods is tangentially related to the deceptive mark ban. Trademark law also strives to protect the reasonable consumers against companies, businesses or other legal entities from unduly gaining from their confusion. If a mark resembles another registered mark so as to cause consumer confusion (as to the source of the goods), then the examining attorney will refuse registration. Factors the examining attorney considers (not a conclusive list):
- Doubt: if there is any doubt as to the likelihood of confusion, the examining attorney will favor the already registered mark.
- Absence of Actual Confusion: If there is no proof or showing of actual confusion amongst consumers, then that evidence may aid the applicant.
- Third Party Registrations: The number and nature of similar marks in use of similar goods could weigh against the applicant if it seems as if the mark is descriptive or commonly used.
- Consumer Sophistication: Some companies serve a particular consumer that would be better informed to discern which products are incorrectly described or not (i.e. LexisNexis search engine versus the general audience of the Lexus brand).
- Consent Agreement: An agreement between the registered mark owner and the applicant mark owner to allow the latter to proceed with the application process shall weigh in the applicant’s favor.
- Fame of the Mark: If the already registered mark is very famous, then usually the more famous mark is favored because more consumers know these marks and will more likely associate the marks with the goods (also this would prevent “dilution” of the famous mark’s reputation).
On basis of Flags, Coat of Arms, State or Municipality, or Foreign Country
A mark cannot be protected if it consists of, incorporates or gives the appearance or the effect of a national flag, coat of arms including any other national symbols (of U.S. insignia and foreign nations) or other symbols of the U.S. states or municipalities.
On basis of portrayal of living individuals or dead Presidents
A mark shall not be registered if it consists of or incorporates the name, portrait or signature indentifying a particular individual or of a deceased President without the consent of the widow (only applicable if the widow is alive).