trademark first use in commerce

5 Reasons for Trademark Refusal

By John DiGiacomo

The US Patent and Trademark Office will not register a trademark unless it functions as a mark (see 15 U.S.C. §§1051, 1052, 1053, 1127). To do so, the mark must serve as an indicator of the source of the goods, identifying and distinguishing them from other goods and services. This points to the need for a mark to be “inherently distinctive,” that is, it identifies a unique source/manufacturer/originator of a product or service.

Whether a proposed mark is “inherently distinctive” depends on the objective circumstances — how the mark would be perceived by the relevant public — not the applicant’s intentions.

Within this framework, here are five reasons for a trademark refusal:

1. Trademark Refusal Based on Being Merely Ornamental

A proposed trademark that is merely decorative or ornamental cannot be registered as a trademark. Mere ornamentation or decoration does not function as a mark and does not identify a single, unique commercial source of the product.

Examples:

  • On automobile tires, three narrow white concentric rings of approximately equal width are not trademarkable; the design is just a refinement of a general ornamental concept.
  • On white athletic socks, two parallel colored bands at the top of the sock, the upper band red, and the lower band blue, are not trademarkable, merely ornamental.
  • On sports watches, the feature of color-matching the watch bezel and band is not trademarkable. This design is nothing more than a variation on common or basic color schemes for sports watches.
  • On dishes, a floral pattern of morning glories and leaves is not trademarkable; it is purely ornamental and not an identifying commercial source for product.
  • On t-shirts and baseball caps, the word SUMO coupled with stylized representations of sumo wrestlers is not trademarkable; it is merely an ornamental feature of an applicant’s goods.

Note there is an exception to the “mere ornamentation” rule when the ornamentation is identifying a so-called “secondary source.” For example, a t-shirt with the designation “NEW YORK UNIVERSITY” is not merely ornamental since it conveys to consumers the “secondary source” of the t-shirt (New York University), rather than the manufacturing source.

Size, location, and dominance are important factors when considering whether a mark is “merely ornamental.” A small, neat, discrete word or design feature may easily be seen as a trademark. By contrast, the same word or design greatly enlarged and emblazoned across the entirety of a garment or product is likely to be perceived as decorative.

2. Trademark Refusal Based on Being Merely a Slogan

Slogans are not generally “inherently distinctive.” They might be fun and popular, but do not identify the source, or the secondary source, of goods or services. Thus, when used on t-shirts and mugs, etc., consumers perceive the words or the design as conveying a message rather than indicating the source of the goods.

Examples:

  • The phrase “WELCOME TO THE D” on signs and banners at the Detroit airport and other travel hubs is a greeting, not a source identifier
  • “I ♥ DC” on t-shirts – this phrase is an expression of enthusiasm and does not create the commercial impression of a source indicator
  • “NO MORE RINOs!” conveys a political slogan devoid of source-identifying significance
  • “YOU ARE SPECIAL TODAY,” commonly found on coffee mugs or ceramic plates, is not source-indicating
  • Similarly, “DAMN I’M GOOD” inscribed on bracelets and hang tags is also not source-indicating

In general, common expressions and symbols are not perceived as marks. Examples include the peace symbol, a “smiley face,” or the phrase “Have a Nice Day.”

3. Trademark Refusal Based on Being Merely Informational

If a phrase, logo or term is merely informational, then by its very nature it is not a source-identifier and cannot be registered as a trademark.

Examples:

  • “I ♥ NY” is merely informing others of one’s civic pride
  • “DRIVE SAFELY” is merely a commonplace safety admonition
  • “THINK GREEN” or “PROUDLY MADE IN USA” are merely informational or political slogans
  • “WATCH THAT CHILD” on construction material is merely informational or a safety admonition
  • “FRAGILE,” seen on bumper stickers, is again merely informational

4. Trademark Refusal Based on Not Identifying a Single Source

As noted, the function of a trademark is to identify a single commercial source for particular goods or services. If consumers are accustomed to seeing a slogan or term used in connection with items from many different sources, then the slogan or term cannot be registered as a trademark.

Examples:

  • “ONCE A MARINE, ALWAYS A MARINE,” when displayed on clothing items, does not identify single unique source; customers would be accustomed to seeing the phrase on clothing from many different sources
  • “I ♥ DC” – the ubiquity of the phrase on hats, t-shirts, and souvenirs similarly suggests that customers do not see the phrase as identifying a single commercial source of the goods
  • “WHY PAY MORE?” doesn’t distinguish the applicant’s products or services from others

5. Trademark Refusal Based on Too Many Words (Failure to Function)

Finally, there are circumstances in which a proposed trademark has too many words or elements, and thus cannot successfully identify to consumers the single, unique commercial source.

A good recent example is found in the case In re Light, 2014-1597, 2014-1598 (Fed. Cir. 2016). The applicant applied for several trademarks, including one that contained a stylized font described as  “SHIMMERING BALLERINAS & DANCERS CHARACTER COLLECTION.” This was surrounded by three columns of words naming the characters, including “SHIMMERING WIND-HARP BUTTERFLIES JALINDA, JALISA, JAHA, JAJA, JELANI, & JUM” and “THE AIRY BALLERINA & DANCER CLARISSA.” The entire proposed mark contained approximately 660 words and more than 90 character names.

The Examining Attorney rejected the proposed mark asserting that, among other things, it would not function for consumers as a mark because of the great number of words, character names and design elements. The USPTO was affirmed by the Federal Circuit.

According to research by University of North Carolina law professors Gerhardt and McClanahan, novice applicants that filed for a trademark without a lawyer only got past the Examiner to the publication stage 57% of the time. By contrast, experienced trademark lawyers successfully reached the publication stage for their clients 83% of the time.

Contact Revision Legal

If you need experienced trademark attorneys, call or write Revision Legal today. We can be reached by using the form on this page or by calling us at 855-473-8474.

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