Certain subject matter cannot be protected or registered as a trademark. Unregistrable brands include those that are (1) generic, (2) deceptive, and (3) confusingly similar to existing registrations or applications.
1 – Generic Brands
What is a generic trademark?
A generic trademark is a common term used to describe the category of goods or services with which it is used and can never be protected. If customers and clients understand that the mark identifies the type of products or services you are offering without even educating them, then the mark is generic. For example, a brand of golf clubs called “golf clubs” is generic. Other generic terms include words like “computer” for a computer store or “shoes” for a shoe store.
Generic terms cannot be registered as a trademark or protected because other people also have the right to use the generic terms for describing the products they are selling. However, it is possible to combine a generic term or mark with other words to get the trademark registered. For example, the brand of golf shoes called “Fore Shoes” would not be generic.
How do I know if my mark is generic?
If you want to know if your mark is generic, there’s a two-part test you can apply.
First, look to see if the type of goods or services is determined by the mark. For example, if you’re selling tables, is the word furniture in the mark?
Second, you should ask yourself if the consumers understand that the mark identifies the type of goods or services, you’re selling without educating them.
If the answer to both questions is YES, then the mark is generic.
2 – Deceptive, Deceptively Misdescriptive, or Geographically Deceptive Brands
What is a deceptive, deceptively misdescriptive, or geographically deceptive trademark?
A “deceptive” mark is one that that deceives the general public by providing a description unrelated to the product or service offered. For example, an ice cream branded CHOCOLATE 12 but flavored Vanilla might be deemed deceptive.
Misdescriptive marks are not “deceptively misdescriptive” unless there is some element of deception.
For example, the brand “HONDURAS SMOKY” for cigars might be deemed geographically deceptively misdescriptive if the cigars are produced in Cuba, not Honduras.
How do I know if my mark includes an element of deception?
The United States Patent and Trademark Office (USPTO) employs the following test to determine whether a trademark includes deceptive matter, namely:
- deceptive mark is a mark that misdescribes something about the product or service you offer;
- if so, is a purchaser likely to believe that the misdescription actually describes the good/service; and
- if so, is the misdescription likely to affect a purchaser’s decision to buy the product/service.
If the answer to each of the above questions is YES, then the USPTO will refuse registration of your trademark on the basis that it’s deceptive.
How do I know if my mark is “geographically deceptive”?
The USPTO uses the following test to determine whether a trademark is geographically deceptively misdescriptive:
- Is the primary significance of the mark a generally known geographic location
- Do the goods/services not originate in the place identified in the mark?
- Would purchasers believe that the goods/services do originate in the geographic place identified in the mark?
- Would the misrepresentation be a material factor in a purchaser’s decision to buy the goods/services?
If the answer to all four of these questions is YES, then the USPTO will refuse registration of your trademark on the basis that it’s geographically deceptively misdescriptive.
3 – Brands that are Confusingly Similar to Existing Registrations or Applications
When is a brand deemed confusingly similar to an existing registration or application?
When a brand such as a symbol or logo is so exceedingly similar to an existing trademark that the public might mistake the symbol or logo with the existing one, then the symbol or logo might be deemed confusingly similar to the existing one.
How do I know if my trademark is confusingly similar to an existing registration or application?
The only way to know if your brand is confusingly similar to an existing registration or application is to perform a full comprehensive trademark search.
Not sure whether your brand can be trademarked?
If you submit a trademark application attempting to register any one of the discussed trademarks, the examining attorney at the USPTO will issue a trademark office action indicating why he/she believes your mark is generic, deceptive, and/or confusingly similar and, therefore, not entitled to registration. Doing this will cost you resources and cause you a lot of frustration.
Therefore, before you submit a trademark application attempting to register any one of the discussed trademarks, get in touch with us to make sure it’s trademarkable. Our law firm has experienced U.S. licensed attorneys who can handle the entire registration process from start to finish for a single flat fee. We can be reached at 1 800-651-7301, via email at email@example.com, or through our contact form below.