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.

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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