Trademark Registration Requirements

Trademark registration is all about ensuring that a mark uniquely identifies a product or service. Key requirements include distinctiveness, actual use in commerce, and avoiding confusion with existing marks, all crucial for protecting brand identity in the marketplace.

1. Distinctiveness of the mark

   • A mark must be capable of identifying the source of a product or service.
   • Distinctiveness is categorized into four levels: arbitrary, suggestive, descriptive, and generic.
   • Stronger marks (arbitrary and suggestive) are more likely to be registered than weaker marks (descriptive and generic).

2. Use in commerce

   • The mark must be used in the sale or advertising of goods or services.
   • "Use in commerce" means the mark is used in a way that affects interstate commerce.
   • Actual use or a bona fide intention to use the mark in commerce is required for registration.

3. Non-generic nature of the mark

   • A mark cannot be a common name for the goods or services it represents.
   • Generic terms are not eligible for trademark protection.
   • The mark must be distinctive enough to identify the source rather than the product itself.

4. Non-descriptiveness (or acquired distinctiveness)

   • Descriptive marks describe a characteristic or quality of the goods/services and are not inherently protectable.
   • A descriptive mark can gain protection if it acquires distinctiveness through extensive use in the market.
   • Evidence of consumer recognition can support claims of acquired distinctiveness.

5. No likelihood of confusion with existing marks

   • The mark must not be confusingly similar to an already registered mark.
   • Factors considered include the similarity of the marks, the relatedness of the goods/services, and the channels of trade.
   • A likelihood of confusion can lead to refusal of registration.

6. Not merely a surname

   • Marks that are primarily surnames are generally not registrable unless they have acquired distinctiveness.
   • The mark must not be solely a last name or a common surname.
   • Evidence of secondary meaning can help overcome this refusal.

7. Not geographically descriptive

   • Marks that merely describe a geographic location are not eligible for registration.
   • Geographic terms can be registered if they have acquired distinctiveness or are not primarily geographic.
   • The mark must not mislead consumers about the origin of the goods/services.

8. Not functional

   • A mark cannot be functional, meaning it cannot be essential to the use or purpose of the product.
   • Functional features are not protectable as trademarks.
   • The mark must serve a source-identifying function rather than a utilitarian one.

9. Not immoral, deceptive, or scandalous

   • Marks that are considered immoral, deceptive, or scandalous are not eligible for registration.
   • This includes marks that may offend a substantial segment of the public.
   • The determination is based on contemporary community standards.

10. Not disparaging or falsely suggesting a connection

    • Marks that disparage or falsely suggest a connection with persons, institutions, beliefs, or national symbols are not registrable.
    • Disparaging marks can harm the reputation of individuals or groups.
    • The mark must not mislead consumers about a connection that does not exist.