2.4 Bars to Registration and Protection
5 min read•july 25, 2024
Trademark law sets up various hurdles for registration and protection. These "statutory bars" include issues like distinctiveness, , functionality, and more. Understanding these barriers helps businesses create stronger, more defensible trademarks.
Overcoming registration bars requires strategic thinking. Choosing inherently distinctive marks, acquiring , and avoiding functional features are key tactics. Comprehensive searches, disclaimers, and building evidence of acquired distinctiveness can also help navigate the trademark registration process successfully.
Statutory Bars to Trademark Registration and Protection
Statutory bars to trademark registration
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- Distinctiveness-related bars
- lack distinctiveness cannot function as trademarks (aspirin)
- marks directly describe product features require secondary meaning (Soft Soap)
- Deceptively misdescriptive marks falsely describe product characteristics (Woolite for cotton fabric cleaner)
- Primarily geographically descriptive marks indicate product origin need secondary meaning (Philadelphia Cream Cheese)
- Deceptiveness bars
- Deceptive marks mislead consumers about product qualities or characteristics (Lovee Lamb for synthetic car seat covers)
- Primarily geographically deceptively misdescriptive marks falsely suggest geographic origin (Swiss Army Knives made in China)
- Functionality bar
- Utilitarian functionality prevents monopolization of useful product features (oval-shaped fishing lure)
- Aesthetic functionality bars protection for design elements affecting product cost or quality (black outboard boat motors)
- Scandalous or immoral marks offend public sensibilities or morality (FUCT clothing brand)
- Disparaging marks denigrate persons, institutions, beliefs, or national symbols (Washington Redskins)
- False suggestion of connection implies non-existent relationship with person or institution (OBAMA PAJAMA)
- with existing marks causes consumer confusion in marketplace (DOMINO'S for pizza vs DOMINO for sugar)
- Use of flags, coats of arms, or other insignia implies government endorsement (use of Olympic rings)
- Living person's name, portrait, or signature without consent violates privacy rights (TRUMP steaks without Donald Trump's permission)
- Surname marks require secondary meaning to be registered (MCDONALD'S)
Rationale for registration bars
- Distinctiveness-related bars
- Prevent monopolization of common terms encourages linguistic diversity in branding (APPLE for computers vs apples for fruit)
- Encourage creation of unique brand identifiers fosters innovative marketing strategies (KODAK, XEROX)
- Deceptiveness bars
- Protect consumers from misleading information ensures truthful product representation (SILK for soy milk requires disclaimer)
- Maintain integrity of the trademark system builds consumer trust in branding (THE REAL SEAL for dairy products)
- Functionality bar
- Prevent trademark law from hindering competition keeps useful features available to all (round tire shape)
- Preserve the boundary between trademark and patent law maintains distinct intellectual property protections (ergonomic keyboard design)
- Scandalous, immoral, or disparaging marks
- Uphold public policy and social values reflects evolving societal norms (DYKES ON BIKES initially rejected, later accepted)
- Avoid government endorsement of offensive content maintains neutrality in controversial issues (THE SLANTS case led to policy change)
- False suggestion of connection
- Protect individuals and institutions from unauthorized associations preserves reputation control (PRINCESS KATE for clothing without royal approval)
- Likelihood of confusion
- Prevent consumer confusion in the marketplace ensures clear product identification (POLAROID factors test)
- Protect existing trademark owners' rights maintains brand value and investment (ADIDAS vs ADDIDAS)
- Use of official insignia
- Prevent misuse of government symbols maintains official symbol integrity (unauthorized use of FBI seal)
- Avoid implying official endorsement prevents consumer deception about product origin or quality (false use of USDA Organic seal)
- Living person's name or likeness
- Protect individual privacy rights prevents exploitation of personal identity (unauthorized use of celebrity names)
- Prevent unauthorized commercial exploitation respects personal autonomy (TIGER WOODS for golf equipment without permission)
- Surname marks
- Preserve common surnames for public use prevents monopolization of family names (SMITH for blacksmith services)
- Encourage more distinctive branding promotes creative trademark development (FORD acquired distinctiveness for automobiles)
Case studies of bar applications
- Abercrombie & Fitch Co. v. Hunting World, Inc.
- Established spectrum of distinctiveness for word marks categorized trademarks from generic to fanciful (SAFARI for clothing)
- Two Pesos, Inc. v. Taco Cabana, Inc.
- Addressed inherent distinctiveness of trade dress recognized protection for restaurant décor without secondary meaning
- Qualitex Co. v. Jacobson Products Co.
- Explored color as a trademark and functionality doctrine allowed registration of green-gold color for dry cleaning press pads
- Matal v. Tam
- Challenged the ban on disparaging trademarks struck down prohibition as unconstitutional (THE SLANTS for Asian-American band)
- In re Bayer Aktiengesellschaft
- Examined merely descriptive and surname issues rejected ASPIRINA as both descriptive and a surname
- Wal-Mart Stores, Inc. v. Samara Brothers, Inc.
- Distinguished between product design and product packaging required secondary meaning for product design trade dress
- TrafFix Devices, Inc. v. Marketing Displays, Inc.
- Clarified utilitarian functionality doctrine barred trademark protection for dual-spring design of road signs
Strategies for overcoming registration bars
- Conduct comprehensive trademark clearance searches
- Identify potential conflicts with existing marks reduces likelihood of opposition or cancellation
- Assess distinctiveness and potential descriptiveness issues guides selection of stronger marks
- Choose inherently distinctive marks
- Fanciful or offer strongest protection (KODAK, APPLE for computers)
- that require imagination provide good balance of protection and marketability (COPPERTONE)
- Acquire secondary meaning for descriptive marks
- Consistent and extensive use in commerce builds consumer recognition over time
- Advertising and promotional efforts increases public association between mark and source
- Avoid functional features in trade dress
- Focus on non-functional aesthetic elements enhances protectability (Coca-Cola bottle shape)
- Separate utilitarian features from source-identifying elements strengthens trade dress claims
- Use disclaimers for descriptive elements
- Maintain rights in distinctive portions of the mark allows registration of composite marks
- Consider composite marks
- Combine potentially weak elements to create a distinctive whole increases overall distinctiveness
- Obtain consent for use of personal names
- Secure written permission from living individuals overcomes consent-based registration bar
- Develop evidence of acquired distinctiveness
- Consumer surveys demonstrate public recognition of mark as source identifier
- Long-term exclusive use supports claims of secondary meaning
- Utilize the Supplemental Register
- Register descriptive marks that may acquire distinctiveness provides limited benefits while building distinctiveness
- File intent-to-use applications
- Secure priority date before actual use in commerce protects mark during product development phase
- Consider geographic restrictions
- Limit claimed territory to avoid geographic descriptiveness issues allows registration for specific regions
- Maintain consistent use and enforcement
- Police unauthorized use to prevent genericide preserves trademark rights (KLEENEX, BAND-AID)
- Document trademark usage guidelines ensures proper use by licensees and affiliates
Key Terms to Review (18)
Abandonment: Abandonment in trademark law refers to the loss of rights to a trademark due to non-use or failure to maintain it, indicating that the owner no longer intends to use the mark in commerce. This concept is essential for understanding how trademark rights can be forfeited, impacting various legal processes and rights associated with trademarks.
Abercrombie Spectrum: The Abercrombie Spectrum is a classification system that categorizes trademarks based on their distinctiveness and ability to indicate the source of goods or services. This spectrum ranges from generic terms, which cannot be protected, to fanciful terms, which are inherently distinctive and receive the strongest protection. Understanding where a trademark falls on this spectrum is crucial for determining its eligibility for registration and legal protection.
Arbitrary Marks: Arbitrary marks are trademarks that have no inherent connection to the goods or services they represent. These marks are often random, and their distinctiveness comes from their use in commerce rather than any logical relationship to the product. This unique characteristic allows arbitrary marks to be highly protectable under trademark law, as they fall on the stronger end of the distinctiveness spectrum.
Deceptiveness: Deceptiveness refers to a situation where a trademark misleads consumers regarding the nature, quality, or origin of the goods or services associated with that mark. This concept is crucial as it can prevent trademarks from being registered and protected if they are found to be misleading. Understanding deceptiveness helps distinguish between trademarks that are merely descriptive and those that may confuse consumers, which is important for fair competition and consumer protection.
Doctrine of Functionality: The doctrine of functionality is a legal principle that states that a trademark cannot be registered or protected if it is deemed functional, meaning it is essential to the use or purpose of the product. This doctrine prevents companies from obtaining exclusive rights over useful features that would impede competition and innovation. Essentially, if a feature of a product serves a functional purpose, it cannot be trademarked to ensure that all competitors can freely use that feature without infringing on trademark rights.
Fair use: Fair use is a legal doctrine that allows limited use of copyrighted material without requiring permission from the rights holders. This concept is crucial in balancing the interests of creators with public access to information, especially in contexts like criticism, comment, news reporting, teaching, scholarship, or research.
Generic terms: Generic terms refer to words or phrases that describe a general class of goods or services rather than a specific brand. These terms lack distinctiveness and cannot be registered as trademarks because they do not identify the source of a product or service but instead convey its nature or purpose, thus failing to meet the necessary criteria for trademark protection.
Laches: Laches is a legal doctrine that prevents a party from asserting a claim or right if they have unreasonably delayed in pursuing it, causing prejudice to the other party. This concept emphasizes the importance of timely action in enforcing rights, as delays can undermine the validity of a claim and affect the fairness of legal proceedings.
Lanham Act: The Lanham Act is a federal statute enacted in 1946 that governs trademarks, service marks, and unfair competition in the United States. It provides a comprehensive legal framework for the registration, protection, and enforcement of trademarks, ensuring consumers can identify the source of goods and services while allowing businesses to safeguard their brand identity.
Likelihood of Confusion: Likelihood of confusion is a legal standard used to determine whether consumers might mistakenly believe that goods or services come from the same source due to similar trademarks. This concept is central in trademark law, as it influences decisions on registration, infringement claims, and overall brand protection.
Merely descriptive: Merely descriptive refers to a classification of trademarks that directly describe the goods or services they represent, rather than distinguishing them from others. This type of trademark lacks the distinctiveness necessary for registration and protection because it provides only basic information about the product, such as its characteristics, purpose, or qualities.
Opposition Period: The opposition period is a specified time frame during which third parties can challenge the registration of a trademark after it has been published for opposition. This period allows individuals or entities that believe they may be harmed by the registration to formally oppose it, which can help maintain fair competition and protect consumers from potential confusion.
Secondary meaning: Secondary meaning refers to the acquired distinctiveness of a mark that enables it to identify the source of a product or service rather than simply describing the product itself. This concept plays a vital role in trademark law, as it allows certain marks that may not initially qualify for protection to gain legal recognition over time through extensive use and consumer association.
Section 2(e)(1): Section 2(e)(1) of the Lanham Act prevents the registration of trademarks that are merely descriptive of the goods or services they represent. This means if a trademark simply describes a feature, quality, or characteristic of a product, it cannot be registered. The rationale behind this is that descriptive terms should remain available for all businesses to use in order to describe their products, promoting fair competition.
Section 2(f): Section 2(f) of the Lanham Act allows for the registration of descriptive trademarks that have acquired distinctiveness through secondary meaning. This means that even if a mark initially describes a product or service, it can still be trademarked if consumers have come to associate that mark with a particular source due to its extensive use over time. Understanding this concept is crucial for navigating the complexities of trademark registration, especially when dealing with office actions, color marks, and potential bars to registration.
Suggestive Marks: Suggestive marks are trademarks that hint at the nature or characteristics of the goods or services they represent, requiring consumers to use their imagination to make a connection. These marks sit in the middle of the distinctiveness spectrum, falling between descriptive and arbitrary or fanciful marks, and can play a crucial role in establishing brand identity and protection.
Trademark Modernization Act: The Trademark Modernization Act is a significant piece of legislation enacted in 2020 aimed at updating and enhancing trademark law in the United States. This Act introduces new measures to streamline the registration process, reduce fraudulent registrations, and address concerns surrounding the protection of trademarks, thereby strengthening the overall trademark system.
TTAB Proceedings: TTAB proceedings refer to the legal processes that occur before the Trademark Trial and Appeal Board, a body within the United States Patent and Trademark Office (USPTO) that handles disputes related to trademark registration. These proceedings are essential for resolving issues such as opposition to trademark applications, cancellation of registered trademarks, and appeals from examining attorneys' refusals to register marks. The TTAB plays a crucial role in ensuring that trademarks meet legal standards for protection and are not barred from registration due to various reasons.