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.

What Cannot be Trademarked?

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.

Related Topics

• Intellectual Property Law (Intro)
• What is Intellectual Property?
• What is the purpose in granting intellectual property rights?
• What is required to capture or secure intellectual property rights?
• California Labor Code 2870
• What are Trade Secrets?
• Non-Disclosure Agreement
• Patents or patent rights?
• Letters Patent
• Primary types of patents?
• What Can I Patent?
• Requirements for a valid patent?
• Can your Invention be Patented?
• What is a Patentability Search?
• When is a Patentability Search Necessary?
• Why is a Patent Search Important?
• Requirements for a design patent?
• How to Do a Design Patent Search
• Cost of a Design Patent
• Requirements for a utility patent?
• Why Do You Need a Utility Patent?
• Plant Patent?
• Process for securing patent rights?
• Patent Search
• Basics of Doing a Patent Search
• 5 Rules for Effective Patent Searches
• What are Patent Databases?
• Tools for Patent Searches
• DIY Patent Search
• Understanding Patent Keyword Searches
• Patent Searches for Software
• Doing a European Patent Search
• WIPO Patent Search
• Cost of Doing a Patent Search
• Patent Search vs Patent Analysis
• Structure of a Patent
• Patent Filing Date
• Patent Attorney
• Do You Need a Patent Lawyer?
• Applying for Design patent
• Provisional Patent?
• Applying for Provisional Patent
• Doing a Provisional Patent Search
• How to Draw Up a Provisional Patent
• Converting a Provisional Patent to a Non-Provisional Patent
• What Does Patent Pending Mean?
• Process for enforcing ones patent rights?
• Patent Infringement
• Patent Troll
• What is a Trademark?
• Types of trademark?
• Requirements to capture trademark rights?
• Distinctiveness requirement for a Trademark?
• Determining whether a trademark is sufficient distinctive?
• What is Federal Trademark Registration?
• Conducting Trademark Search
• Should I Conduct a Trademark Search?
• Trademark Application
• Drawing a Trademark
• Filing for federal trademark registration?
• Protections of trademark rights under state law?
• Primary reasons for rejecting a trademark application?
• Common trademark designations?
• Trademark infringement?
• Enforce trademark rights?
• Demonstrate infringement of a trademark?
• What is a copyright?
  
• Digital Millennium Copyright Act or DMCA Explained
• Basics of Copyright Law
• What are the rights of a holder of a copyright?
• What are the elements of a copyright?
• How long is the period of copyright protection?
• What is the process for registering a copyright?
• Who may claim and secure copyright protection?
• What are infringement and the process for enforcing a copyright?
• What are the defenses available against a claim of copyright infringement?
• Public Domain Works
• Licensing Agreement
• End User License Agreement
• What is Fair Use of copyright?
• What is the First Sale Doctrine?
• What international protections exist for intellectual property rights?
• Paris Convention