Bars to Trademark Registration
Not every mark can be trademarked. The law sets up specific bars that prevent certain marks from being registered. These bars exist for two main reasons: to keep competition fair and to protect consumers from being misled about where products come from.
Bars to Trademark Registration
Three major bars can block a trademark application:
- Prior use gives superior rights to whoever used the mark first in commerce. If another party was already using a confusingly similar mark before you, your application gets blocked. The prior user keeps their rights even if the later user manages to register.
- Functionality prevents registration of features that are essential to a product's use, purpose, cost, or quality. The logic here is that functional features give a competitive advantage, and trademark law shouldn't let one company monopolize them. Examples include a product shape necessary for the item to work, a color that serves a utilitarian purpose (like black on solar panels to absorb heat), or features that result from a simpler or cheaper manufacturing method.
- Likelihood of confusion blocks marks that are similar enough to existing marks that consumers might get confused about who makes the product. This is about protecting the public from mistakenly thinking two different companies' goods come from the same source.
Trademarking Surnames and Geographic Terms
Surnames (last names) are not inherently distinctive. Think about it: "Johnson" doesn't automatically point to one specific company. To register a surname as a trademark, you need to show secondary meaning, which means the public has come to associate that name with a particular source of goods or services.
Courts look at several factors to determine secondary meaning:
- Length and exclusivity of use
- Amount of advertising and promotion
- Sales volume and market share
- Consumer surveys and testimonials
Geographic terms face a similar hurdle. They also lack inherent distinctiveness and require secondary meaning. Beyond that, geographic terms face two additional problems:
- Geographically deceptively misdescriptive marks falsely suggest an immaterial connection with a place that doesn't actually affect the consumer's buying decision. For example, "New York Style Pizza" for pizza made in California.
- Primarily geographically deceptive marks falsely suggest a material connection with a place that does influence the consumer's purchase decision. For example, labeling wine "Napa Valley" when it's not actually from Napa. This type is a stronger bar because the geographic origin matters to the buyer.
Ineligible Trademark Subject Matter
Certain categories of marks simply can't be registered:
- Ornamental marks are decorative designs or words that don't function as source identifiers. A graphic printed across a t-shirt for visual appeal, or a slogan used purely for decoration rather than to indicate who made the product, won't qualify.
- Immoral or scandalous marks are those considered offensive by contemporary standards, judged in the context of the goods or services they're associated with.
- Disparaging marks bring persons, institutions, beliefs, or national symbols into contempt or disrepute. Whether a mark is disparaging is based on the perceptions of a substantial portion of the group being referenced.
- Deceptive marks falsely suggest a material connection with a person, place, or thing in a way that influences the consumer's purchase decision.
Distinctiveness and Genericness
The distinctiveness spectrum ranks marks from weakest to strongest:
- Generic (weakest, unprotectable)
- Descriptive (protectable only with secondary meaning)
- Suggestive (inherently distinctive)
- Arbitrary (inherently distinctive)
- Fanciful (strongest)
Genericness is what happens when a trademark becomes the common name for an entire category of product. "Escalator" and "thermos" were once brand names, but they became so widely used as general terms that they lost trademark protection. This is sometimes called "genericide," and it's a real risk for very successful brands.
Trade dress refers to the overall look of a product or its packaging, such as shape, color scheme, or design. To qualify for trademark protection, trade dress must meet two requirements: it must be non-functional (not essential to the product's use or purpose) and distinctive (either inherently or through secondary meaning).