Trademark Registration Requirements

Why This Matters

Trademark registration sits at the heart of intellectual property law because it determines which marks deserve legal protection and which don't. You're being tested on your ability to analyze marks along the distinctiveness spectrum, understand the use in commerce requirement, and identify the various bars to registration that can prevent a mark from receiving federal protection. These concepts appear repeatedly in exam questions because they reveal whether you understand why trademark law exists—to protect consumers from confusion and reward businesses that build brand recognition.

Don't just memorize the list of registration requirements. Know what principle each requirement serves. The distinctiveness requirements protect the competitive marketplace from being locked up by common words. The confusion analysis protects consumers. The functionality doctrine keeps trademark law from swallowing patent territory. When you can explain the policy behind each rule, you'll crush both multiple choice and FRQ questions.

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The Distinctiveness Spectrum

Trademark law's central question is whether a mark can identify source. The stronger a mark's inherent distinctiveness, the easier the path to registration.

Distinctiveness of the Mark

• Four levels of distinctiveness determine registrability—arbitrary, fanciful, suggestive, descriptive, and generic—with arbitrary/fanciful marks receiving the strongest protection
• Inherently distinctive marks (arbitrary and suggestive) qualify for immediate registration because they naturally signal source rather than product characteristics
• Source identification is the core function—a mark must be capable of telling consumers who made the product, not just what the product is

Non-Generic Nature of the Mark

• Generic terms never qualify for trademark protection because they name the product category itself ("computer" for computers)
• Genericide risk exists when strong marks become common names through public use—think "escalator" or "thermos"
• The "who are you/what are you" test helps distinguish generic from descriptive—generic answers "what," while trademarks answer "who"

Non-Descriptiveness (or Acquired Distinctiveness)

• Descriptive marks identify a characteristic, quality, or ingredient of goods and are not inherently registrable on the Principal Register
• Secondary meaning allows descriptive marks to gain protection when consumers come to associate the term with a single source through extensive use
• Evidence of acquired distinctiveness includes advertising expenditures, sales volume, length of use, and consumer surveys demonstrating recognition

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The Commerce Requirement

Federal trademark registration requires a connection to interstate commerce. This isn't just a formality—it's the constitutional basis for federal jurisdiction.

Use in Commerce

• Actual use means the mark appears on goods sold or transported, or in the sale/advertising of services, in a way that affects interstate commerce
• Intent-to-use applications allow applicants to reserve a mark before actual use, but registration won't issue until the applicant demonstrates bona fide use
• Token use is insufficient—the use must be genuine commercial activity, not a sham transaction designed solely to secure rights

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Avoiding Consumer Confusion

Trademark law fundamentally protects consumers from being misled about who makes a product. The likelihood of confusion analysis is the most heavily tested area of trademark law.

No Likelihood of Confusion with Existing Marks

• The multifactor test examines similarity of marks, relatedness of goods/services, strength of the senior mark, evidence of actual confusion, and marketing channels
• Confusing similarity doesn't require identical marks—similar sound, appearance, or commercial impression can trigger refusal
• Relatedness of goods matters because consumers might assume a single source produces related products, even if the marks aren't identical

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Bars to Registration: What Marks Cannot Do

Certain categories of marks face absolute or conditional bars to registration. These rules prevent trademark law from being used to harm competition, deceive consumers, or protect content that shouldn't receive government endorsement.

Not Merely a Surname

• Primary significance test asks whether the public would perceive the mark primarily as a surname rather than anything else
• Common surnames face stronger refusal than rare ones, though even unusual surnames can be refused if surname significance dominates
• Secondary meaning can overcome the surname bar—think "McDonald's" or "Ford"—when consumers associate the name with a brand, not a person

Not Geographically Descriptive

• Primarily geographically descriptive marks face refusal when the mark names the place where goods originate and consumers would likely believe that connection
• Geographically deceptive marks are absolutely barred when the geographic reference is false and material to consumer purchasing decisions
• Acquired distinctiveness can rescue primarily descriptive geographic marks, but deceptive geographic marks cannot be saved

Not Functional

• Functional features are never protectable as trademarks because protecting them would hinder competition—this is patent territory, not trademark
• Utilitarian functionality exists when a feature is essential to the product's use or affects its cost or quality
• Aesthetic functionality applies when protecting a design feature would significantly disadvantage competitors (a color that serves a competitive need)

Not Immoral, Deceptive, or Scandalous

• Scandalous marks historically faced refusal, though recent Supreme Court decisions (Iancu v. Brunetti) have struck down the scandalous marks provision as unconstitutional viewpoint discrimination
• Deceptive marks remain absolutely barred when they misdescribe goods in a way that would materially affect purchasing decisions
• Immoral content bars have been significantly narrowed—know the current state of the law post-Brunetti

Not Disparaging or Falsely Suggesting a Connection

• False suggestion of connection bars marks that imply a relationship with a person, institution, or organization that doesn't actually exist
• Disparagement provisions were struck down in Matal v. Tam as unconstitutional restrictions on free speech
• Living persons' names generally require consent for registration, protecting individuals' rights to control commercial use of their identity

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Quick Reference Table

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Self-Check Questions

1. A company wants to register the word "CREAMY" for ice cream. Where does this mark fall on the distinctiveness spectrum, and what must the company prove to obtain registration?

2. Compare and contrast the barriers facing a primarily geographically descriptive mark versus a geographically deceptive mark. Which can be overcome, and how?

3. Why does trademark law refuse to protect functional features, and how does this relate to the distinction between trademark and patent protection?

4. An applicant files an intent-to-use application but never actually sells products bearing the mark. What happens to the application, and why does the use requirement exist?

5. After Matal v. Tam and Iancu v. Brunetti, which content-based bars to registration remain enforceable, and which have been struck down? What constitutional principle explains the difference?