4.7 Bars to Trademark

Trademark registration faces several hurdles. Prior use, functionality, and likelihood of confusion 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 scandalous marks also face challenges. The distinctiveness spectrum 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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• Prior use bar 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
• Functionality bar 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 inherently distinctive and require secondary meaning, 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 deceptively misdescriptive, falsely suggesting a material connection with a place influencing the public's purchase decision (Napa Valley for wines not from Napa)
  • Must not be geographically deceptively misdescriptive, 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

• Ornamental marks 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
• Disparaging marks 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
• Deceptive marks 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)
• Genericness 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")
• Trade dress, which includes product packaging or design, must be non-functional and distinctive to be eligible for trademark protection