20. What are the primary reasons for denying claims of trademark rights?
Whether pursuant to common law, state or federal registration, there are several common reasons for denying trademark protection of a prospective mark. Some of the more common reasons are as follows:
• the mark is the same or similar to a mark currently used on similar related goods;
• the mark merely describes a product or service;
• the mark is generic and represents a product or service; or
• the mark contains certain prohibited or reserved names or designs.
Pursuant to the USPTO examination guide, there are certain characteristics of marks that cannot be registered. The following is a non-exclusive list of several major types of these marks:
• contains the US Flag;
• coats of arm;
• insignia of the United States, any state or municipality, foreign nation, or any simulation thereof;
• are in some way immoral, deceptive, or scandalous;
• trade names (that are not used to identify the goods or services);
• trade dress that has functionality or lacks distinctiveness;
• purely ornamental or decorative marks;
• color marks that are not distinctive;
• universal symbols used incorrectly;
• immoral or scandalous matter;
• deceptive matter;
• matter that may disparage;
• matter that may falsely suggest a connection (with persons, institutions, beliefs, or national symbols;
• matter that may bring someone into contempt or disrepute;
• contain the name, likeness or signature of living persons without their consent; and
• are too similar to existing trademarks registered with the USPTO
• Discussion: How do you feel about the reasons for denying trademark protection? Why do you think the above-listed types of trademark are not capable of protection? Are there any types of trademark that you believe should be included on or excluded from the list?
• Practice Question: Eric decides to start a sporting goods company. He designs an emblem to represent the business. When he applies to the USPTO for federal protection, the application is denied. What are some of the potential reasons the emblem was denied trademark protection?