by Jonathan Schmig
January 6, 2017
Trademark registration in the U.S. can be a tricky thing.
For one thing, unlike in most countries, trademark registration here is not actually a requirement to enjoying rights in the mark—that is, you have some rights in the mark that you use to identify your business or service or product, even if you do not register that mark with the federal government.
Of course, those rights are very limited, and if you ever wish to enforce your rights, or to have access to all the trademark rights available in the U.S., you need to have your trademark registered with the U.S. Patent and Trademark Office (USPTO).
For the most part, registration is straightforward. But that doesn’t mean some applications aren’t still refused by the USPTO.
And luckily, even refused trademark applications are published—not just the successful trademark applications. (Unlike for, say, design patents in the U.S., where only granted applications are made public, so that the available data on failed or refused applications is very scarce, meaning we the public often aren’t privy to the rationale behind a refusal.)
Listed below are some of the more common grounds for refusal of a trademark application in the U.S. For a full list of reasons that the USPTO might refuse an application, check out the Lanham Act § 2. (The Lanham Act is the main piece of trademark legislation for the United States.)
1. Likelihood of Confusion
Likelihood of confusion is the most common reason an application will be rejected. Essentially, if there is a high probability that the general public will confuse your trademark with someone else’s (already existing) trademark, your registration will not be granted.
The two marks need not be identical. For instance, if you start up a café and called it “Stabrucks,” or “Stambucks,” there’s a good chance the public will be confused as to the source of the product. This is true even if the logo is different, and the color scheme is different.
Of course, it’s a matter of degree, so if you don’t think the public will be confused because the distinction is clear enough, then you might go ahead and take the risk. But it would still be a risk. (Especially considering that, if you are dragged to court, you have to prove “no confusion,” often via surveys and polls, which can be costly regardless of whether you win the case.) There are other exceptions, too—like fair use, for instance if your name is a parody—but they also can toe the line and be costly or difficult to prove in court.
Add to that the fact that your service/product need not be in the same “class” as the other person’s service/product in order for “likelihood of confusion” to be found. For example, if you open up a deli and call it “Stambucks,” that’s probably going to be confusing to a lot of people. But the classes do still need to be “related” or similar to some degree.
Also note that the standard is likelihood of confusion. No actual confusion need be proved to invalidate or refuse your mark. It is sufficient that the mark is similar enough to cause a likelihood of confusion.
2. Merely Descriptive and Deceptively Misdescriptive (and Deceptive)
The first two—“merely descriptive” and “deceptively misdescriptive”—are lumped together even in the Lanham Act. A “merely descriptive” mark is one that simply identifies a quality, function, or characteristic of the service/product. For instance, if you sell chairs under the trade name “Sturdy.” A deceptively misdescriptive mark, meanwhile, is one where the mark misdescribes a quality, function, or characteristic of the service/product. It’s basically false advertising. For instance, selling chairs under the trade name “Real Oak”: Unless the chairs are in fact made of oak (in which case the mark would be “merely descriptive”), this trademark would be “deceptively misdescriptive” because it falsely implies a quality of the product that is not in fact present.
Both of these can be overcome, however, with a showing of secondary meaning. That is, even if your mark is deemed “merely descriptive,” if you can show that the public nonetheless identifies the mark as distinctive, then you may be granted registration.
It’s important to note that “deceptively misdescriptive” is distinct from “deceptive.” A deceptive mark cannot be granted registration, period. Deceptive marks are ones where the intent was to deceive the public, and also where deception actually occurred (i.e., consumers bought the product based on that deception). By contrast, a deceptively misdescriptive mark can be granted registration, if there is a showing of secondary meaning. By definition, that would mean the public is “in on it,” and is not deceived, but instead realizes the “deception” and buys the product anyway.
I know, it’s confusing. (And it only gets worse in the next section.) But one way to think about it is that a deceptively misdescriptive mark is at a fork in the road: it could become deceptive (and thus will not get registration), or it could get secondary meaning (and thus registration). The way it goes will largely hinge on intent of the producer, and on whether the misdescription materially affects consumers’ decisions to purchase.
3. Geographically Descriptive and Geographically Deceptively Misdescriptive
On the face, these two are very similar to the ones in the previous entry. If your mark is “geographically descriptive,” that means it primarily indicates (accurately) the geographic region of origin of the product (or service). For example, “Wisconsin Cheese” for cheese made in Wisconsin. If your mark is “geographically deceptively misdescriptive,” that means it primarily falsely indicates the product’s geographic origin. For example, “Wisconsin Cheese” for cheese made in Utah.
Simple enough. The tricky part is where the exceptions fall. A (non-geographic) “merely descriptive” mark, as mentioned above, can overcome registration hurdles with a showing of secondary meaning. The same is true for a “geographically descriptive” mark. On the other hand, while a (non-geographic) “deceptively misdescriptive” mark can also overcome those hurdles via secondary meaning, a “geographically deceptively misdescriptive” mark cannot. Lanham Act § 2(f) does not exempt these types of marks with the secondary meaning loophole. (Likewise, geographically deceptive marks are not exempted, and therefore cannot get protection, the same as “regular” deceptive marks.)
Furthermore, if the mark is for wines or spirits, and it geographically indicates a place other than the true origin, it will be refused registration, regardless of whether it was “misdescriptive.” And translations (can) count too. In 2009, the USPTO refused to allow Spirits International to register the vodka name “Moskovskaya,” which in Russian means “Of Moscow.” Spirits was not based in Moscow, nor was their product made in Moscow. So the USPTO said the mark was geographically deceptively misdescriptive. The case then went to the Federal Circuit, who sent it back down to find out whether those who spoke Russian were a substantial portion of the intended consumer population.
4. Scandalous, Disparaging, and Immoral
These grounds for refusal have been in the news more and more for the last few years thanks to the NFL football team located in Washington, D.C. When, in 2014, the USPTO canceled the registration of the “Redskins” mark—and then again in July, 2015, when a federal judge affirmed the cancellation—everyone in the U.S. was suddenly exposed to this fundamental trademark doctrine. (There, it was “cancellation,” and not “refusal,” because the registration had already been granted. The Lanham Act allows the USPTO to cancel any mark that is or has become scandalous, disparaging, or immoral, among other things.) Interestingly, these three grounds are the very first ones mentioned in the Lanham Act as valid grounds by which to refuse registration, listed even before “likelihood of confusion” and “deception.”
The meanings are straightforward enough, even if they are highly subjective. Context is extremely important. For example, if the mark is self-disparaging (e.g., a group of lesbians calling their biker gang “Dykes on Bikes”), the context may suggest that the term is not disparaging, because it would instead be a case of a targeted group re-appropriating an otherwise disparaging term. Similarly, the USPTO may come to a different decision if the mark in question is “FCUK,” versus “F.C.U.K.”
Generally, if the applied-for mark is merely a decoration, then it will be refused. This is most often an issue for designers. For example, if American Eagle wanted to adorn one of its shirt designs with a decorative “44,” and then try to register that as a trademark that only American Eagle can use, the USPTO would likely refuse, because that is just ornamentation. It is not “the point” of the shirt, or the name of the shirt, or the type or kind of shirt… It’s simply a decorative feature.
Other cases have involved furniture designers who tried to trademark a style feature, like the “curls” indicative of Baroque style. The courts there, as well, have refused to allow rights, because those flourishes and ornamentations must be available to competitors.
If the “primary significance” of the mark to the purchasing public is merely a surname, registration will be refused. Phrased otherwise, if the public associates your last name with the mark, as opposed to associating your last name with the product, you won’t get the registration.
This distinction allows for the big names out there—McDonald’s, Ford, Abercrombie—to legally enjoy their registered trademarks. The difference is in secondary meaning (“surnames” being one of the three major secondary meaning candidates identified in Lanham Act § 2(f)).
Your surname must be associated with the product (i.e., established as a brand) before it can be registered. Until then, you can’t prove secondary meaning, and therefore you are barred from trademark registration with the USPTO.
There are plenty of other reasons why a mark might be refused registration. Your mark can’t be the flag (U.S., state, or other country); it can’t be the name, portrait, or signature of a living person (or deceased U.S. president), at least without their consent; it can’t falsely suggest a connection with a person (alive or dead), institution, or belief; nor can a valid trademark be “functional.”
The simple point is that the USPTO has a whole armory full of weapons it can use to refuse (or cancel) your trademark registration. When faced with the tall task of registration, one might be inclined to just avoid the whole mess altogether, since, as I said above, you don’t need registration to have rights in the mark here. But that would be highly inadvisable. Not only does lack of registration mean you lose out on a bunch of benefits, but it also says nothing to the validity of the mark. It may be that the mark you’re using is and always has been invalid, and you simply didn’t know it. That’s not a lesson you want to learn in court when someone whose marks are registered drags you in there.
My advice instead would be to spend the time and effort figuring out what it means to be a “valid trademark,” and make sure you’ve got one, and then spend the money on a trademark attorney to help you register that mark.