Understanding Office Actions Refusing To Register Trademarks
The United States Patent and Trademark Office’s (USPTO) examining attorneys often refuse trademarks based on numerous criteria listed in Chapter 1200 of the Trademark Manual of Examining Procedure (TMEP). These reasons cover a broad spectrum of issues that aim to maintain the integrity of the trademark registry and protect consumers from confusion or deception.
One common ground for refusal is the likelihood of confusion with an existing registered trademark or a prior pending application. This could occur if the applied-for trademark is so similar to an existing one that consumers might mistake the source of the goods or services. The USPTO aims to prevent such consumer confusion by denying these types of applications.
The examining attorneys can also refuse a trademark if it is merely descriptive or deceptively misdescriptive of the goods or services. Descriptive trademarks are those that merely describe an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services. If a trademark merely describes the goods or services it represents, it may not be registrable as it prevents other businesses from describing their goods or services in a straightforward manner.
Furthermore, the USPTO may refuse a trademark if it primarily geographically describes the origin of the goods or services, primarily consists of a surname, or if it is ornamental rather than indicative of the source of the goods or services. These types of trademarks may not allow consumers to identify a single source of the goods or services, leading to potential confusion.
Trademarks that include names, portraits, or signatures identifying a particular living individual or a deceased US President during the widow(er)’s lifetime, without written consent, can also be refused. This helps to protect personal rights and prevent any false implications of endorsement or association.
Additionally, certain types of content are expressly prohibited from registration, such as immoral or scandalous matter, disparaging or false suggestive matter, and symbols that may falsely suggest a connection with national institutions. This includes flags, insignia, or armorial bearings of the United States, any State or municipality, or any foreign nation.
Applications can also be refused if the trademark contains matter that is used in commerce but is not used or intended to be used to indicate source, or when it consists of a mark that, when used on or in connection with the goods or services of the applicant, is merely functional.
Finally, examining attorneys may refuse registration based on the grounds of res judicata, collateral estoppel, and stare decisis. If a legal issue has already been decided in previous legal proceedings involving the same parties, the principle of res judicata or collateral estoppel may apply, preventing the re-litigation of these issues. Similarly, stare decisis refers to the principle of upholding established legal precedents, which can guide the examining attorney’s decision to refuse a trademark.
These are typical, but not exhaustive, grounds for refusal of a trademark registration by an examining attorney at the USPTO, demonstrating the careful considerations made to maintain the fairness and effectiveness of the trademark system.
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 Likelihood of Confusion, Mistake, or Deception;
Refusal On Basis of Conflicting Trademarks in Pending Applications;
Refusal On Basis of Descriptiveness;
Refusal On Basis of Geographic Significance;
Refusal On Basis of Surname;
Refusal On Basis of Trademark Not Acquiring Distinctiveness or Secondary Meaning;
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 Likelihood of Confusion, Mistake, or Deception
Section 2(d) of the Trademark Act serves as a crucial measure to maintain the integrity of the United States’ trademark system and protect consumers from potential confusion, mistakes, or deception. The key premise of this section is that a trademark should not be registered if it significantly resembles an already registered mark, or a mark or trade name previously used in the United States by another and not abandoned, to an extent that it could cause confusion, mistake, or deception when used on or in connection with the goods or services of the applicant.
Under the framework of this section, the United States Patent and Trademark Office (USPTO) evaluates the “likelihood of confusion” using a set of factors established in a case known as In re E. I. du Pont de Nemours & Co. These factors, often referred to as the DuPont factors, include the similarity of the marks in their entireties in terms of appearance, sound, connotation, and commercial impression; the relatedness or nature of the goods or services; the similarity of trade channels; the conditions under which sales are made and the buyers to whom sales are made; the fame of the prior mark; the number and nature of similar marks on similar goods; and the existence of actual confusion.
When an examining attorney reviews an application, they will search the USPTO’s database to find whether there are any registered or pending marks that are similar and used in connection with related goods or services. If a similar mark is found and it is believed that the public would likely be confused or deceived, the examining attorney will issue a refusal under Section 2(d).
This provision aims to prevent businesses from registering trademarks that could potentially mislead consumers into believing that their goods or services are connected or affiliated with another brand. By preventing the registration of confusingly similar trademarks, Section 2(d) plays a critical role in maintaining a robust and reliable trademark system that facilitates fair competition and safeguards consumer trust.
Refusal On Basis of Descriptiveness
The Trademark Act provides a significant regulation stating that marks which “merely describe” the associated goods or services are not eligible for registration on the Principal Register unless they have acquired distinctiveness or secondary meaning. This regulation plays a critical role in maintaining a fair marketplace, by ensuring that businesses cannot monopolize common language that other businesses may need to use to describe their goods or services.
A mark is considered merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services. For example, a trademark application for “Sweet” for a line of candy would be considered merely descriptive because it directly describes a quality or characteristic of the candy.
The rationale behind this rule is twofold. Firstly, it allows competitors to use these descriptive terms to honestly describe their goods or services. If one company could claim exclusive rights over a descriptive term, it would be unfairly disadvantageous to competitors who need to use that term to describe their own goods or services. Secondly, descriptive terms do not inherently serve to identify the source of goods or services. Consumers would not likely view a common, descriptive term as an indicator of the origin of goods or services, which is the primary purpose of a trademark.
However, even if a mark is considered merely descriptive, it may still be registered on the Principal Register if it has acquired distinctiveness, often referred to as secondary meaning. Acquired distinctiveness means that through extensive use, advertising, sales, and public recognition, the mark, which is primarily descriptive, has come to be recognized by the public as identifying the source of the goods or services. Therefore, while a merely descriptive mark is not inherently registrable, it may become so with sufficient proof of its acquired distinctiveness.
Refusal On Basis of Geographic Significance
Sections 2(e)(2) and 2(e)(3) of the Trademark Act provide regulations to protect the use of geographic terms within trademarks, establishing grounds for refusal based on geographically descriptive or geographically deceptive uses.
Section 2(e)(2) stipulates that a mark that is primarily geographically descriptive of the goods or services with which it is used will be refused registration on the Principal Register, unless it has acquired distinctiveness. A geographically descriptive mark is one that names a real and significant geographic location, which consumers are likely to believe indicates the origin of the goods or services, and the goods or services do indeed originate from that place. For example, “New York Pizza” might be refused for a company making pizza in New York, because it primarily describes the geographical origin of the product.
On the other hand, under Section 2(e)(3), a mark that is primarily geographically deceptive or primarily geographically deceptively misdescriptive will be refused registration, and unlike geographically descriptive marks, these cannot become registrable with a showing of acquired distinctiveness. For a mark to be refused under this section, it must first be determined that the primary significance of the mark is a generally known geographic location. Second, consumers must be likely to believe the place identified by the mark indicates the origin of the goods or services, even if that belief is false. Lastly, the misrepresentation would materially affect the consumer’s decision to purchase the goods or services.
For instance, if a company based in Florida applies to register “Alaskan Vodka” for vodka that is not made in Alaska, it could be refused as being geographically deceptively misdescriptive, as consumers might be misled into believing the vodka originates from Alaska, potentially influencing their purchasing decision based on the false belief that it possesses qualities associated with Alaskan-made products.
These provisions serve to ensure honesty in advertising and to prevent businesses from misleading consumers about the geographic origin of their goods or services. They also preserve the ability of authentic local producers to use their geographic terms to describe their own goods or services.
Refusal On Basis of Surname
Section 2(e)(4) of the Trademark Act stipulates that a mark that is primarily merely a surname cannot be registered on the Principal Register unless it has acquired distinctiveness or secondary meaning. This provision ensures that surnames are available for businesses and individuals to use in commerce and aren’t monopolized by a single entity.
A mark is considered “primarily merely a surname” if the primary significance to the purchasing public is that of a surname. It’s important to note that the determination is not solely based on the intent of the user or the fact that it might also function as a personal name. Rather, it’s focused on the perception of the general public. The USPTO examining attorney will typically consider various factors, such as whether the term is a common surname, whether anyone connected with the applicant uses the term as a surname, whether the term has any recognized meaning other than as a surname, and whether it has the “look and feel” of a surname.
For example, an application for “Johnson” for a line of clothing might be refused registration under Section 2(e)(4) because Johnson is a common surname in the United States and the public would likely perceive it as such. However, it may be possible to register a surname if it has acquired distinctiveness, also known as secondary meaning. This means that over time and through extensive use, the public has come to recognize the surname as a source indicator for specific goods or services, not just as a surname.
The burden of proving acquired distinctiveness is on the applicant, who must demonstrate that consumers associate the surname primarily with their goods or services, rather than simply viewing it as a surname. Proving acquired distinctiveness can be challenging and often requires substantial evidence such as sales figures, advertising expenditures, consumer surveys, and any other evidence demonstrating a significant duration and degree of use in commerce.
Refusal On Basis of Ornamentation
Under the guidelines of the Trademark Manual of Examining Procedure (TMEP) 1202.03, a mark that merely serves as a decorative feature on goods does not qualify as a trademark and is generally not registrable. This is because such ornamentation does not function to identify and distinguish the source of goods or services, which is the primary purpose of a trademark.
Ornamentation can take various forms such as words, designs, slogans, or even trade dress. For instance, a decorative phrase or slogan displayed prominently on a t-shirt might be seen by the public as conveying a message, rather than indicating the source of the goods. Similarly, a pattern used as a design element on a piece of clothing or an ornate design on a piece of jewelry may be considered primarily ornamental if it does not serve to identify the source.
When assessing whether a design functions as a trademark, the USPTO examining attorney will consider factors such as the commercial impression of the proposed mark, the location and size of the mark in relation to the goods, and evidence of distinctiveness or secondary meaning.
For example, a design or phrase that is prominently placed and dominates the front of a t-shirt might be considered merely decorative, whereas a smaller logo placed in a traditional trademark location such as the tag of a t-shirt or the pocket of a pair of jeans might be seen as a source identifier.
A mark considered to be primarily ornamental can potentially be registered if the applicant can demonstrate that it has acquired distinctiveness. This typically requires substantial evidence to show that through extensive use, advertising, and consumer recognition, the mark has come to serve as a source identifier in the minds of the public, despite its decorative nature.
Contact Our Chicago Business Attorneys
We understand the complexities and challenges surrounding the process of trademark registration. We recognize that receiving an office action from the USPTO refusing to register your applied-for mark can be daunting and discouraging. However, this does not signify the end of your journey towards obtaining trademark registration.
Our business attorneys specialize in addressing and resolving issues related to office actions. We have successfully guided numerous clients through the process of responding to these office actions, whether they pertain to likelihood of confusion, descriptiveness, geographic significance, surnames, ornamentation, or any other grounds for refusal.
Our team is adept at developing strategic and effective responses to ensure your application aligns with USPTO guidelines. Remember, an office action is typically not a final refusal; rather, it’s an opportunity to strengthen your application with the right guidance and information. We invite you to contact our firm to explore how our business attorneys can assist you in navigating these challenges and continue towards the successful registration of your trademark.