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From
Brand Fidelity comes
Names That Can & Cannot Be Trademarked

(USA)

Brand Fidelity, on its website, guides you through the entire process of creating, acquiring and protecting a great name.

Names That Can & Cannot Be Trademarked (USA)
The naming effort involves so many business and creative factors -- does the name sound good? does it communicate your company's vision? -- that it's easy to lose sight of the legal criteria that can determine whether your name achieves trademark status.

The USPTO has a series of rules governing the types of names that can and cannot be trademarked. These rules can be very hard to apply. They are highly subjective, and it is often difficult to articulate why a name falls into one category rather than another. As a result, you should use these rules as general guidelines only.

2000 Brand Fidelity ,Inc,


Type of term

Trademarkable?

Examples

1) Generic

Generic terms name a type of product or service rather than a specific product from a specific manufacturer (or a specific service of a particular provider).

No. Generic terms can never be trademarked, no matter how well known a particular name might be. If it were otherwise, the terms would be unavailable for use by competitors to describe their own goods and services.

An existing, distinctive, mark can become generic through use. Escalator, Thermos, Aspirin, Trampoline, and Kerosene all began their lives as distinctive, unique marks, but lost their trademark status through generic use by consumers - using the term to describe a category or type of goods rather than the specific goods themselves.

 

"California Vineyards" for a winery located in California

"Video Buyer's Guide" for a magazine.

"Web Communications" for consulting in the area of Internet communications.

"Cable Ty" for ties used to bind cables.

"Carryout Cafe" for a cafe offering take-out food.

"Replica Gaslights" for replicas of historical gaslight fixtures.

 


Type of term

Trademarkable?

Examples

2) Merely descriptive

"Merely descriptive" terms immediately, and with some specificity, describe a feature, function, use, purpose, ingredient, or characteristic of goods or services.

Although the line between this type of mark and a generic mark is a fine one, there is a difference:

  • Generic marks name the product itself; its type, or category.
  • Merely descriptive marks hone in to describe a feature or use of the product rather than the product itself.

 

Generally no. A merely descriptive name cannot be registered as a federal trademark unless its owner can demonstrate that, due to long use in the market or extensive publicity and advertising, consumers have come to associate the term with the owner as the source of particular goods or services rather than the goods or services themselves.

This change in consumer perception is known as "acquired distinctiveness" or "secondary meaning," and can be extremely difficult to prove, with the burden growing as the descriptiveness of the mark increases.

Acquired distinctiveness is frequently demonstrated through use of customer surveys and evidence of spending on advertising and publicity.

Although each case is decided on its own facts, several general rules hold true:

 

"Breadspred" as a mark for jellies and jams is merely descriptive because a characteristic of jellies and jams is that they can be spread on bread.

"Mouseklip" is merely descriptive of clips used to hold a mouse cord in position on a desk.

"Lasergraft" is merely descriptive of surgical hair transplantation services because a feature of the service is the use of lasers to graft hair.

"Featherlite" as a mark for gloves is merely descriptive because minimal weight was a characteristic of the gloves' lining.

"Net Entertainment" is merely descriptive of magazines covering interactive entertainment on the Internet (or "net").


 

  • Even if a term has several different meanings, it remains "merely descriptive" so long as one of its meanings is descriptive of the goods at issue.

"Web Graphics" for a company specializing in Internet graphics is merely descriptive, despite the fact that the phrase also describes graphics resembling or inspired by a spider's web.

 

  • A term does not need to describe all qualities or features of a product to be merely descriptive - describing one prominent feature or characteristic is enough.

"Limo Care" is merely descriptive of automotive repair services, even though applicant repairs more than limousines.

 

  • Images can be merely descriptive if they depict an important feature or characteristic of the goods.

 

A visual depiction of a scuba tank is merely descriptive ofs underwater diving tour services.

 

 

  • Superlative or laudatory terms used to attribute excellence to a product or service- "best," "super," and "exquisite" are examples - are nearly always merely descriptive, and do not make an otherwise descriptive mark distinctive.

 

 

  • Creative misspellings do not make a descriptive term distinctive.

"C-Thru" is equally as descriptive of transparent rulers as "see through," the words it misspells.

 

  • A descriptive term remains descriptive even if expressed in a foreign language.

 

"Caffe Sorbetto," a mark used for the ingredients of mocha and coffee flavored soft drinks, is merely descriptive because its Italian terms mean "coffee sorbet."

 

 

 

  • Otherwise descriptive components can be combined to form distinctive marks if done in an inventive or unexpected manner.

 

 

"Sugar & Spice" is not merely descriptive of bakery products, despite the fact that each term individually describes ingredients of baked goods, because the phrase "sugar & spice" is part of a familiar nursery rhyme. . That element of creative invention is enough to prevent the mark from being merely descriptive.

 

Determining whether a mark is merely descriptive is an extremely difficult and highly fact-specific task. Marks that seem descriptive may in fact be suggestive, and vice versa. Unless you are absolutely certain that your mark is merely descriptive, do not abandon hope. The trademark examiner assigned to your case may decide that the mark is suggestive, or, if the examiner decides against you, a good attorney may prevail with a similar argument.

 

 


Type of term

Trademarkable?

Examples

3) Suggestive

Rather than providing an immediate description of a product's use or features, suggestive marks evoke and suggest positive associations for, or attributes of, the product. As a result, some degree of thought or imagination is required to comprehend the nature of the goods or services.

Yes. Suggestive marks are considered inherently distinctive, and can thus be registered without a showing of acquired distinctiveness.

As mentioned earlier, the line between merely descriptive and suggestive marks is a fine, and hotly contested, one. If there is any doubt whether a mark is merely descriptive or suggestive, the USPTO decides in favor of the applicant. Therefore, do not discount a mark that seems to be merely descriptive unless it is obviously so. You may ultimately succeed in registering it.

 

"Coppertone" for tanning products

"Greyhound" for bus services.

"Mustang" for automobiles.

"Esprit" for clothing.

"Passion" for perfume.

 

 

 

 

 


Type of term

Trademarkable?

Examples

4) Arbitrary

Arbitrary marks are common words used in unexpected and completely non-descriptive ways.

Yes. . Like suggestive marks, arbitrary marks are inherently distinctive, and require no demonstration of acquired distinctiveness to achieve registration.

More importantly, arbitrary marks are considered very strong by the courts, and are entitled to a greater scope of protection against infringement and likelihood of confusion than suggestive marks.

"Penguin" for books

"Camel" for cigarettes

"Apple" for computers

"Sun" for computers

"Penguin" for books (Note: "penguin" would be suggestive if applied to refrigerators)

"Arrow" for shirts

"Amazon" for Internet book and product sales

 


Type of term

Trademarkable?

Examples

5) Fanciful or coined

Fanciful terms are invented words whose only purpose is to identify particular goods or services.

Yes. . Fanciful marks share the advantages of arbitrary marks: they require no showing of acquired distinctiveness to be registered, are extremely strong, and are entitled to a significant scope of protection against infringement.

"Exxon"

"Kodak"

 


Type of term

Trademarkable?

Examples

6) Geographically descriptive

A term whose primary meaning describes the geographic source of your products or services. The geographic meaning must be the primary sense of the word, e.g., California, Alabama, or Albany. Words such as Mobile, with secondary geographic meanings, do not violate this rule.

No (unless you can prove that customers associate term with your specific products or services)

"California Pizza Kitchen"

"Texas Steakhouse & Saloon"

"The Nashville Network"

"Nantucket Nectars"

 

 

If a mark contains a primarily geographic term but the product or service does not originate from that place, it cannot be registered under any circumstances. This type of mark carries the ungainly title of "primarily geographically deceptively misdescriptive."

 

"Durango" for tobacco not produced in Durango, Mexico.

"New England" for baked goods

 

Geographic locations that have no possible commercial connection to the products or services, or are so remote or obscure that consumers are not apt to associate them with commerce.

"South Pole" for fruits and vegetables; "Tapatio (a region in Mexico)" for hot sauce; "Vittel (a region in France)" for cosmetics.

 

 

Geographic terms that are used to describe a particular style or type.

 

Examples: Swiss Cheese, and Philadelphia Cheese Steak.

 


Type of term

Trademarkable?

Examples

7) Surname

Terms whose primary use is as a surname.

No, not without a showing of acquired distinctiveness. The prime example is McDonald's for fast food restaurant services.

If the term's primary meaning is not as a surname - Hunt, Bird, Tailor, Major - registration can be attained without evidence of acquired distinctiveness.

"Peterson's Plumbing"

Knowles'

Moore's

 


Type of term

Trademarkable?

Examples

8) Deceptive

Terms that falsely describe product or service characteristics and are material to a consumer's buying decision.

No, never, regardless of whether acquired distinctiveness is shown.

 

 

 

 

 

 

 

"Lovee Lamb" for seat covers not made of lambskin

"Organik" for clothing made from non-organic cotton.

"Silkease" for clothing not made from silk.

"Cedar Ridge" for siding not made from cedar.

"Blanc de Chine" for new porcelain lamps and figurines, where the term "blanc de Chine" designates antique porcelain from a particular historical period, and the products named are not from this period.

 


Type of term

Trademarkable?

Examples

9) Miscellaneous (immoral or scandalous, disparaging, suggestion of false connection, national flags and symbols, likeness of living persons or deceased presidents)

No

"Bo Ball" for a sports ball suggests false connection with Bo Jackson.
"Red Cross" may only be used by American Red Cross

A) Immoral or Scandalous Terms

Terms that have immoral or scandalous meanings or connotations.

 

No, even with a showing of acquired distinctiveness. The USPTO is not prudish, however. Marks that are in bad taste can be registered. The following marks were allowed:

 

"Friggin" for refrigerator magnets

"Bad Frog" for beer, where graphic depicted a frog "flipping the bird."

"Big Pecker Brand" for t-shirts, where graphic depicted a large bird.

B) Deceptively Misdescriptive Terms

If a mark both misdescribes a product or service and consumers are apt to believe the misdescription, then the mark is deceptively misdescriptive.

No, unless the owner can demonstrate acquired distinctiveness. If the product feature or characteristic that is misdescribed is material to a consumer's buying decision, then the mark becomes deceptive and can never be registered, regardless of whether it acquires distinctiveness.

"Cameo" for jewelry not featuring cameos.

C) Terms that Disparage, Falsely Suggest a Connection with, or Bring a Person, Institution, Belief or National Symbol into Contempt or Disrepute.

Not surprisingly, this category includes terms that disparage, falsely suggest a connection with, or bring a person, institution, belief, or national symbol into contempt or disrepute.

 

 

 

 

No, never.

Graphic mark with "X" superimposed over a hammer and sickle would bring national symbol of USSR into disrepute.

Graphic mark depicting a greyhound-like dog defecating would bring Greyhound's similar mark into disrepute

"U.S. Aqua" for drinking water falsely suggests a connection with the U.S. Government. (As evidence of how fact-specific these cases can be, the PTO decided in a separate case that "U.S. Health Club" could be registered)

"Westpoint" for shotguns falsely suggests a connection with the U.S. Military Academy.

 

D) Terms consisting of or containing Flags, Coats of Arms, or Other Sovereign Insignia.

As the title indicates, this category includes marks that consist of or contain a flag, coat or arms, or other insignia of the United States, or a state, municipality, or foreign country.

No, never.

 

E) Terms and Images Protected by Statute.

Certain terms and graphic images are reserved by statute to the U.S. government and cannot be used by others.

No, never.

The greek red cross insignia, which only the American Red Cross may use.

Names of agencies, such as the FBI and CIA.

 

F) Marks containing the Name, Portrait, or Signature of a Living Individual or Deceased U.S. President.

Marks that contain the name, portrait, or signature of a particular living individual, or of a deceased United States President during the lifetime of his widow.

 

 

No, unless consent is given by the individual or the president's widow.

 

 

 

"Prince Charles" for meat products.

"Eisenhower" for greeting cards.

 


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