Bars To Trademark Registration

Federal trademark law gives that particular marks are “per se” ineligible for trademark registration and will be refused pursuant to Section 2 of the Lanham Act. The categories of marks barred from federal trademark registration are: (1) immoral, deceptive, or scandalous matter (2) national insignia (three) identification of a living individual (four) confusingly similar marks and (5) descriptive and/or deceptive marks.

1) Immoral, Deceptive, or Scandalous Matter (2(a)) – Any mark determined by the United States Patent and Trademark Office (USPTO) to be immoral, deceptive, scandalous, or which could disparage, bring into contempt, disrepute or falsely suggest a connection with persons (living or dead), institutions, beliefs, or national symbols, could not be registered with the USPTO. Immoral or scandalous, as utilized in this exception, has been defined as likely to trigger scandal or shocking to the sense of truth, decency, or propriety. Deceptive has been held to mean the denomination of a product as something which it is not, which is likely to affect a buyers choice to purchase.

2) National Insignia (2(b)) – The National Insignia category prevents registration of marks that comprise of “the flag or coat of arms or other insignia of the United States, or of any state or municipality, or of any foreign nation, or any simulation thereof.”

three) Identification of a Living Individual (2(c)) – The Lanham Act also prohibits trademark registration of a “name, portrait, or signature identifying a particular living individual except by his or her written consent, or the name, signature, or portrait of a deceased President of the United States in the course of the life of his widow.”

four) Confusingly Comparable Marks (2(d)) – The most common bar to registration is a Section 2(d) refusal, which prohibits registration of a mark which so resembles a registered trademark as to be likely, when applied to the goods or services of the applicant, to trigger consumer confusion, mistake or deception as to the source of the goods or service. USPTO examining trademark attorneys will reject a trademark application deemed to be confusingly similar to a registered mark. If there is a previously pending application that could also be confusingly comparable to the applicant’s mark, the pending application might also be cited as a bar to registration.

5) Descriptive and Deceptive Marks (2(e)) – The final prohibition to registration under the Lanham act is the rejection of marks that are merely descriptive or deceptively misdescriptive of the goods or services to which they are applied. A mark may be merely descriptive since it relates to the nature or quality of the covered goods or since it suggests a geographical connotation. A mark may also be deemed descriptive if it describes a individual, a surname or words that are primarily understood to be solely surnames.

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