At The Keller Law Firm, we talk a lot about claiming your distinction, which allows your company to stand out in the marketplace. Strong branding is essential, and trademark protection to reinforce your brand is a must. So, if you are trying to develop a distinctive trademark or service mark, it helps to know what makes a mark weak and why the U.S. Patent and Trademark Office might reject your application and force you to start all over again.
Here is a brief summary of the reasons you might receive an “Office Action” rejection, based on the federal statute governing trademark applications, 17 U.S.C. Sec. 1052. Basically, there are six reasons:
False connection — To prevent applicants from capitalizing on the notoriety of an individual or institution with which they have no connection, the USPTO refuses applications that “falsely suggest” a connection exists. Examiners consider whether:
- The mark is the same as, or a close approximation of, the name or identity previously used by another person or institution;
- The mark would be recognized as such, in that it points uniquely and unmistakably to that person or institution;
- The person or institution named by the mark is not connected with the activities performed by the applicant under the mark; and
- The fame or reputation of the person or institution is such that, when the mark is used with the applicant’s goods or services, a connection with the person or institution would be presumed.
So, if you’re ready to market Johnny Cash’s Jailhouse Hash, you might want to go back to the drawing board.
Federal or state insignia, flag or presidential signature — These are elements that belong in the public domain and cannot be removed through trademark registration. In other words, if you want to show how patriotic your company is by presenting the U.S. flag in the backdrop of your mark, you’re entitled to do so. You just can’t stop anyone else from doing exactly the same thing. However, there are ways to use flag imagery that does not invite rejection.
You may use “elements of flags in a stylized or incomplete form,” such as the stars and stripes of the U.S. flag or the maple leaf of the Canadian flag, if the overall design fits one of the following criteria:
- The flag design is used to form a letter, number, or design.
- The flag is substantially obscured by words or designs.
- The design is not in a shape normally seen in flags.
- The flag design appears in a color different from that normally used in the national flag.
- A significant feature [of the flag] is missing or changed.
In other words, a creative twist on these public domain elements could be acceptable.
Name, portrait, signature without consent — Similar to the false connection describe above, applicants are not allowed to misappropriate anyone’s image or likeness. If you want a celebrity featured in your mark, you need to get permission.
Likelihood of confusion — The most common reason for refusal is that the mark too closely resembles an existing, registered mark, and would create confusion in the minds of the public as to the source of the goods or services. We go into this reason for rejection in greater detail in this blog post.
The mark is merely descriptive or deceptively misdescriptive — Words that simply say what the product is, or images that merely present the product, are not worthy of trademark protection. So, you’re free to produce “creamy” peanut butter, you just can’t ask the government to prohibit other companies from calling their peanut butter “creamy.” Likewise, words or images that give a false impression of the product are not worthy of protection. Also within this category are proposed marks that are merely geographic, like American or Southwestern, and marks that are simply surnames, such as Johnson or Smith.
Causing dilution of an established mark by blurring or tarnishment — Along the lines of “likelihood of confusion” is the idea of dilution, meaning that a similar, famous mark already exists, and the introduction of your mark will “impair the distinctiveness of the famous mark.” To assess the possibility of dilution, an examiner would look at:
- The degree of similarity between the mark or trade name and the famous mark.
- The degree of inherent or acquired distinctiveness of the famous mark.
- The extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark.
- The degree of recognition of the famous mark.
- Whether the user of the mark or trade name intended to create an association with the famous mark.
- Any actual association between the mark or trade name and the famous mark.
Dilution by tarnishment relies on the same analysis, but ultimately asks whether the new mark would hurt the reputation of the old mark. This is potentially an issue in the emerging cannabis industry with proposed marks that resemble those of established brands in other industries.
Before you invest too heavily in the development of a trademark or service mark, it helps to speak to a knowledgeable attorney who can critique your proposed mark and alert you to any potential pitfalls. The Keller Law Firm helps small to medium-sized companies successfully register their trademarks to receive the maximum level of legal protection. Call us today.