top of page
  • Writer's pictureTodd

Limitations on What Can Receive a Trademark Registration




Although section 2 of the Lanham Act is titled “Trademarks registrable on the principal register”, it lists what cannot receive a trademark registration. In some cases, you may be able to show acquired distinctiveness, but generally speaking, these are not allowed to be registered:


Deceptive Marks


If your goods are tofu, you probably can’t get a registration for ABC QUALITY BEEF.


Marks that Falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute


I could not get a registration for the Elvis Law Firm if the estate of Elvis Presley does not actually have a connection to my law firm.


Geographical identification used on or in connection with wines or spirits, that identifies a place other than the origin of the goods


For example, I can’t plant a vineyard in my backyard and expect to be able to call it Todd’s Burgundy Wine Co.


Flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any foreign nation, or any simulation thereof.


Thus, if you want to start a fireworks stand with a logo that is mainly the United States flag, you may have some difficulty obtaining a registration.


A mark that so resembles another mark registered with the USPTO likely to cause confusion, mistake, or to deceive.


This is where the various likelihood of confusion tests come into play.


A mark that is merely descriptive


The distinctiveness spectrum from fanciful to generic helps guide whether a mark can be registered.


Deceptively misdescriptive


For example, selling LOVEE LAMB covers that are not made of lambskin may be deceptively misdescriptive. Or for another example the OCEANFRONT RESTAURANT that is actually next to a trash dump is probably deceptively misdescriptive.


Primarily geographically descriptive


For example, you may not be able to register APPALACHIAN LOG HOMES or SMOKY MOUNTAIN TRAILS without secondary meaning.


Primarily geographically misdescriptive


You could not register CUBAN CIGARS for cigars that do not originate out of Cuba.


Primarily merely a surname


Typically, you will not be able to register a last name as a trademark, even if your use of the name has nothing to do with it being a surname. You may be able to register it on the Supplemental Register, though. An example of a famous mark that is primarily merely a surname that was able to show secondary meaning and obtain a registration is McDonald’s.


Matter that is functional


If the mark itself is part of the invention, that is what patents are for. For example, the springs keeping a sign from blowing over are not a source-identifier, but rather they are a functional part of the sign.


There were also some portions of the Lanham Act that were struck down as unconstitutional:


Immoral or scandalous matter.


Iancu v. Brunetti is a case based on clothing with the letters FUCT, meaning “Friends You Can Trust.” The USPTO had denied registration because it was scandalous. The Supreme Court said that the prohibition on immoral and scandalous marks violates the First Amendment.


Disparaging Marks


The United States Supreme Court declared the portion of the Lanham Act that prohibited disparaging marks from being registered to violate the First Amendment in Matal v. Tam, which involved a band made up of people of Asian descent who were denied a trademark registration for the name SLANTS because it was disparaging to people of Asian descent...


Consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow.


This section of the Lanham Act is currently being challenged and may be considered by the United States Supreme Court in a case involving the mark TRUMP TOO SMALL for shirts. The USPTO rejected the application. The Federal Circuit held that when applied to a mark that is critical of a public figure, the law violates the First Amendment under Tam and Brunetti. The USPTO asked the Supreme Court to review the decision. Until the Supreme Court decides whether it will take the case, the USPTO is suspending action on pending applications involving marks that are critical of government officials or public officials.


Please note that the information contained in this article is intended for general informational purposes only and not as specific legal advice. The facts of your situation may differ from this general information. It is not intended to and does not in any way establish an attorney-client relationship.

If you wish to schedule a consultation, let’s work together on your trademark needs

Comments


bottom of page