Recently the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office (“TTAB”) cancelled the federal trademark registrations for the NFL’s Washington Redskins on the grounds that they violate Section 2(a) of The Trademark Act of 1946. Specifically, the Redskins’ trademarks were cancelled under Section 2(a) because, in the eyes of TTAB, the term REDSKIN is a racial slur referencing Native Americans and, as such, must be cancelled as the continued registration of the same would be immoral or scandalous under Section 2(a) of the Act.
Although the Redskins case will likely spend years on appeal, the decision illuminated one of the lesser known refusals to register a trademark. While most people are familiar with the more mainstream refusals (e.g., trademark refused registration because it is likely to cause confusion with a prior pending or registered trademark, trademark refused registration because it is merely descriptive or geographically descriptive), they may not be aware of some of the lesser-known but equally as important refusals which may be encountered when attempting to register a federal trademark.
With this in mind, we at The Trademark Company have penned this article so that you, the trademark holder, can be better versed on seven lesser-known substantive refusals that can block the registration of your trademark when applying for federal protection with the U.S. Patent and Trademark Office.
1. Mark is a Functional Design or Non-Distinctive Trade Dress: Did you know you can protect the shape or design of your product packaging? You can so long as it has acquired distinctiveness. For instance, consumers now recognize the hour glass shape of the iconic Coca Cola bottle, thus the packaging shape of the bottle is protected under federal trademark law. However, a design cannot be functional (i.e., have some utility to the user such as a specific contour of a bottle to make it easier to hold) and be protected as a trademark. So when applying to register a package design you must be able to establish both that consumers recognize the shape of your packaging to identify the source of your goods therein (i.e., acquired distinctiveness) and that the packaging is not functional (i.e., the design has no utilitarian purpose like making a bottle easier to grip). If you cannot, your trademark application for your package design will be refused federal protection.
2. Mark is Merely Ornamental: Does your trademark serve to identify the source of your goods or services or will it be viewed by consumers as merely a design which does not identify the source of said goods. The easiest way to understand this refusal is to think about the iconic yellow smiley face from the 1980s. If you were alive during the 1980s, you remember the yellow smiley face on t-shirts and later other products. They were so emblematic of that decade they were featured in the movie Forrest Gump. But who made those shirts? Don’t know do you? And that, at its core, is the basis for the ornamental refusal. In short, the yellow smiley face is not seen as a source identifier by consumers. It is merely seen as ornamental or a design appearing on a shirt. As such, it lacks the ability to function as a trademark because it does nothing to tell the consumer who made the shirt. They only see it as a neat design. Compare the smiley face design to Ralph Lauren’s now iconic Polo design. When a consumer views that picture or embroidery on the lapel of a shirt it clearly functions to identify the source of the goods at issue. Thus, when considering whether this refusal will apply, one must ask whether consumers will view your design as merely a design not identifying the source thereof or will they perceive the same to identify the source of your goods thus functioning as a trademark.
3. Title of a Single Creative Work: You cannot register a trademark for the title of a single creative work. In the 1970s when George Lucas first published the now iconic Star Wars he could not have received trademark protection for the terms “Star Wars” in connection with a book or a movie? Why? At that time Star Wars represented the title of a single creative work. In short, U.S. trademark law does not recognize protection for the same until a title becomes part of a series. Ever wonder why every Star Wars movie since the original starts with the title Star Wars with the sub title of the episode? That creates the rights in the trademark Star Wars by making it a series. Thus, if you are an author you cannot receive trademark protection for the title of a single creative work until it becomes a series.
4. Immoral or Scandalous Matter, Matter Which May Disparage, Matter Which May Falsely Suggest a Connection: As the public is now aware by and through the U.S. Patent and Trademark Office’s recent decision to cancel the Washington Redskins’ registered trademarks, you cannot receive trademark protection for words or images that are immoral or scandalous as viewed in the eyes of the consuming public. What types of trademarks will be refused under this provision? Well, racial slurs for one. That is what led to the Washington Redskins losing the rights in their trademarks. But also many profane words will not be permitted to register (e.g., any trademark including the “F word”) as well as terms of a sexual nature. But what exactly will draw the scrutiny of the U.S. Patent and Trademark Office for this refusal is often challenging and best left to be determined by a trademark professional experienced in such matters.
5. Mark is a Non-Stylized Flag, Coat of Arms, or other Flag of the U.S. or a U.S. State: You cannot register a non-stylized depiction of the U.S. flag, a state flag, or a coat of arms. These symbols are viewed as being too universal such that the U.S. Patent and Trademark Office cannot grant exclusive rights to any one individual to use the same in regard to a specific good or service. However, highly stylized versions of the same can be registered if the stylization is of a sufficient nature.
6. Mark is the Name of a Living Individual or a Living or Deceased U.S. President: You cannot register the name of a living individual unless you have their consent to do so. This is not relegated to those persons in the public eye but applies equally whenever an applicant tries to register any name that could refer to a person. Likewise, you cannot register the name of a living or deceased U.S. President. For instance, every few years when we elect a new commander-in-chief. Without fail within the next few days the U.S. Patent and Trademark Office is flooded with applications attempting to register the newly elected president’s name for a variety of goods and services. They are all rejected under this provision of The Trademark Act of 1946.
7. Trademark is a Surname: Did you know you cannot register a last name as a trademark? It’s true. The Act prohibits the registration of a trademark that is primarily merely a surname. As such, if your name is Bob Smith and you have a line of goods with which you would like to establish as a brand name better not just try and register SMITH as your trademark as it will be perceived as a surname and will be refused registration.
In summary, protecting your trademark(s) is a critical step in every business model. After all, your trademark is your business’s most valuable asset. A proper understanding of the trademark registration system is critical to your overall brand protection strategy. With this knowledge in hand, pitfalls such as those above as well as the others built into the system far too numerous to list in this article can be avoided with a proper understanding of the system or with the assistance of someone who retains that knowledge.
As always, if you have any questions regarding this or any related topics Contact Us at The Trademark Company.