What may not serve as a trademark? What is not registerable?

Certain words or symbols cannot be appropriated as a trademark, and may not be registered under the Federal law known as the Lanham Act. These are outlined below.

(a) Generic words (the common name of a thing, such as “piano”, “concrete”, “cigarette”, “copy”, “car”)

(b) Descriptive marks that merely describe a product or service that have not achieved recognition as functioning as a trademark (trademark practitioners call such recognition “Secondary Meaning” and the term is fully explained below). Descriptive marks may be registered on the “Supplemental Register” and then moved onto the principal register after secondary meaning is acquired.

(c) Geographically descriptive marks, for example, the name of any state, city or foreign nation. You may register such a mark if it is not generally identifiable as a source of the goods, or if you build secondary meaning over time through sales and advertising.

(d) Primarily merely a surname, except if you build secondary meaning over time through sales and advertising.

(e) Deceptively misdescriptive marks

(f) Immoral or deceptive marks

(g) Scandalous, immoral or used in a disparaging matter – For example, is the trademark “Redskins” owned by the Washington Redskins professional football team scandalous or disparaging to American Indians? The word “Senussi” was rejected for cigarettes on the grounds it is the name of a Moslem religious sect.

(h) Disparaging words

(i) Suggesting a false connection with persons, institutions, beliefs or national symbols.

(j) Flags, coats of arms or other insignia of the U.S.

(k) An individual without his consent

(l) A deceased President, while the widow is still alive

(m) Trade names, unless used on goods or services in the same way a trademark is used

(n) Certain words and phrases covered by Special Statutes providing for exclusive use by certain organizations, such as trademarks of the Boy Scouts, the American Legion, the Veterans of Foreign Wars and the Daughters of the American Revolution and any symbols of the “Olympics”.

Case Studies: Trademark Limitations and Non-Registerable Marks

Case Study 1: Generic Words

In a recent case, a company attempted to register the term “Car” as a trademark for their automobile manufacturing business. However, the application was denied as “Car” is considered a generic word that refers to the common name of the product. The company was unable to appropriate the term for exclusive use in the marketplace.

Case Study 2: Descriptive Marks

A clothing brand sought to register the term “ComfortFit” as a trademark for their line of comfortable apparel. However, the application was rejected as the term was deemed descriptive and had not acquired secondary meaning. The brand was advised to establish secondary meaning through sales and advertising before reapplying for trademark registration.

Case Study 3: Geographically Descriptive Marks

A restaurant chain attempted to register the name of a city as their trademark to indicate the origin of their cuisine. However, the application was initially rejected as the name of the city was geographically descriptive. The chain was advised to demonstrate that the name had acquired secondary meaning in the context of their business, which would make it eligible for trademark registration.

Case Study 4: Surnames

An entrepreneur tried to register their surname as a trademark for their line of skincare products. However, the application was denied, as surnames are generally not registrable unless they have acquired secondary meaning through extensive sales and advertising. The entrepreneur was advised to establish secondary meaning before reapplying for trademark registration.

Case Study 5: Scandalous or Disparaging Marks

A sports team attempted to register a racially offensive term as their trademark. The application was rejected as the term was deemed scandalous and disparaging to a particular group of individuals. The team was informed that trademarks cannot be used to promote offensive or derogatory messages.