4.7 Bars to Trademark
3 min read•june 25, 2024
Trademark registration faces several hurdles. Prior use, functionality, and can prevent a mark from being registered. These bars ensure fair competition and protect consumers from confusion about product origins.
Surnames, geographic terms, and certain subject matter like ornamental or also face challenges. The helps categorize marks, with generic terms being the weakest and fanciful ones the strongest for trademark protection.
Bars to Trademark Registration
Bars to trademark registration
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- prevents registration of a mark confusingly similar to one already used by another party, giving the prior user superior rights to continue using the mark even if the later user registers it
- prohibits registration of marks that are essential to the use, purpose, cost, or quality of a product, as functional features provide a competitive advantage and are not protectable as trademarks (shape necessary for operation, color serving utilitarian purpose like black for solar panels, features resulting from simple or inexpensive manufacturing methods)
- Likelihood of confusion bar prevents registration of marks that are similar enough to existing marks to potentially confuse consumers about the source of goods or services
Trademarking surnames and geographic terms
- Surnames (last names) are not and require , acquired when the public associates the surname with a particular source of goods or services, to be registered as trademarks
- Factors considered in determining secondary meaning include length and exclusivity of use, advertising and promotion, sales volume and market share, and consumer surveys and testimonials
- Geographic terms are not inherently distinctive and require secondary meaning to be registered as trademarks
- Must not be , falsely suggesting a material connection with a place influencing the public's purchase decision (Napa Valley for wines not from Napa)
- Must not be , falsely suggesting an immaterial association with a place not affecting the public's purchase decision (New York Style Pizza for pizza made in California)
Ineligible trademark subject matter
- are merely decorative designs or words that do not identify the source of goods or services (designs on t-shirts not indicating brand, slogans used for aesthetic appeal rather than as source identifiers)
- Immoral or scandalous marks, determined by contemporary standards and context of the associated goods or services, are ineligible for registration
- that bring persons, institutions, beliefs, or national symbols into contempt or disrepute, based on perceptions of a substantial composite of the referenced group, are ineligible for registration
- that falsely suggest a material connection with a person, place, or thing influencing the public's purchase decision are ineligible for registration
Distinctiveness and genericness
- The distinctiveness spectrum categorizes marks based on their inherent strength, ranging from generic (weakest) to fanciful (strongest)
- occurs when a term becomes the common name for a product or service, losing its ability to function as a trademark (e.g., "escalator" or "thermos")
- , which includes product packaging or design, must be non-functional and distinctive to be eligible for trademark protection
Key Terms to Review (15)
Deceptive Marks: Deceptive marks refer to trademarks or trade names that are likely to deceive or confuse consumers about the source, quality, or characteristics of the goods or services associated with the mark. These types of marks are considered problematic and are generally not eligible for trademark registration or protection.
Deceptively Misdescriptive: Deceptively misdescriptive is a term used in trademark law to describe a mark that, on its face, appears to accurately describe the goods or services it represents, but in reality, is misleading or false. This term is particularly relevant in the context of the 4.7 Bars to Trademark, which outlines the various grounds for refusing trademark registration.
Disparaging Marks: Disparaging marks refer to trademarks that are considered offensive, derogatory, or demeaning towards individuals, groups, or entities. These types of marks are generally not eligible for federal trademark registration as they can be seen as harmful or discriminatory.
Distinctiveness Spectrum: The distinctiveness spectrum refers to the varying degrees of trademark distinctiveness, which determines the level of protection and legal rights associated with a trademark. This spectrum ranges from the most distinctive to the least distinctive trademarks, and it is a crucial concept in the context of the 4.7 Bars to Trademark.
Functionality Bar: The functionality bar refers to the legal concept that certain features or designs of a product cannot be protected by trademark law because they are essential to the product's function or purpose. This principle helps ensure that functional aspects of a product remain available for use by competitors, promoting competition and innovation.
Genericness: Genericness refers to the loss of a trademark's distinctiveness, where a once-distinctive trademark becomes the common name for the product or service it represents. When a trademark becomes so widely used and recognized as the generic term for a product or service, it loses its ability to serve as a unique identifier and can no longer be protected as a trademark.
Geographically Deceptively Misdescriptive: Geographically deceptively misdescriptive refers to a trademark that falsely suggests a geographic origin or source, misleading consumers about the true nature or origin of the product or service. This term is relevant in the context of bars to trademark registration, as it can be grounds for refusing or canceling a trademark registration.
Immoral Marks: Immoral marks refer to trademarks or other commercial identifiers that are considered unethical, indecent, or contrary to public morality. These types of marks are often prohibited from registration or use in the context of trademark law and regulations.
Inherently Distinctive: Inherently distinctive refers to a trademark that is unique and distinguishable from other marks without the need for additional meaning or context. These trademarks are immediately recognizable and do not require any secondary meaning to be associated with the brand or product.
Likelihood of Confusion: Likelihood of confusion is a key concept in trademark law that determines whether the use of a trademark by one party is likely to cause consumer confusion with the trademark of another party. It is a central consideration in evaluating trademark infringement claims.
Ornamental Marks: Ornamental marks are non-functional design elements or decorative features added to a product or its packaging, which do not serve a practical purpose but are intended to enhance the aesthetic appeal or visual identity. These marks are distinct from trademarks, which are used to identify the source of goods or services. In the context of bars to trademark, ornamental marks are an important consideration as they may not be eligible for trademark protection due to their purely decorative nature, lacking the necessary distinctiveness to function as a source identifier.
Prior Use Bar: The prior use bar is a legal concept in trademark law that prevents a party from registering a trademark if another party has already made prior commercial use of a substantially similar mark. This bar aims to protect the rights of those who have established trademark rights through actual use in the marketplace, rather than just through registration.
Scandalous Marks: Scandalous marks are trademarks that are considered offensive, immoral, or shocking to the public's sense of decency. These types of marks are prohibited from federal trademark registration under the Lanham Act, as they can be detrimental to the public and the trademark system.
Secondary Meaning: Secondary meaning refers to the acquired distinctiveness of a trademark or trade dress that was originally non-distinctive or generic. Over time, through extensive use and promotion, a mark can become associated with a specific source or origin in the minds of consumers, gaining legal protection as a trademark even if it was not inherently distinctive.
Trade Dress: Trade dress refers to the overall visual appearance and design elements of a product or service that identify its source and distinguish it from competitors. It encompasses the unique combination of features, such as size, shape, color, texture, graphics, and packaging, that create a distinct and recognizable brand identity.