Bars to Trademark Registration

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 What Is Intellectual Property Law?

Intellectual property law is the set of statutes and laws that provide certain privileges and protections for owners and inventors of certain pieces of intellectual property. Intellectual property laws are intended to encourage and protect the creation of new ideas, the creation of new technologies, as well as artistic creativity for the economic growth and prosperity of the United States.

With the numerous protections granted by intellectual property laws, an owner of a piece of intellectual property will have the confidence that their creative work and ideas can be protected and marketed. The following is a list of different types of intellectual that fall under the umbrella of intellectual property law:

It is important to note that there are both federal and state protections regarding intellectual property. However, many of the protections, such as trademark protections, only apply when the intellectual property is properly registered.

What Is a Trademark?

In legal terms, a trademark is defined as any word, design, phrase, logo, or other symbol that is used to identify a product and/or the source of a product. As such, a trademark is essentially a business mark that creates an identity for that business. One of the main purposes of a trademark is usually to distinguish one product and/or manufacturer from other products and manufacturers.

Trademarks can be owned by individuals, partners, or any legal entity, including corporations. Some of the most popular trademarks are recognized worldwide, such as the Disney mouse ears, Mcdonald’s golden arches, Apple, etc.

What Is a Registered Trademark?

Simply put, a registered trademark is a word, design, phrase, logo, or other symbol that has been approved as an official trademark through the federal United States Patent and Trademark Office (“USPTO”).

Registered trademarks can be used in connection with a specific product or line of products, such as screen printing and the sale of clothing. Registered marks can also be used in connection with the provision of various professional services, such as plumbing. It is important to note that the trademark registration application process for product trademarks and service trademarks are often different.

However, both application processes typically require a background search of the USPTOs database in order to check that the mark isn’t already in use by another entity. The application process also involves the submission of various different documents and descriptions that identify how the mark will be used in commerce.

How Do I Register a Trademark?

As noted above, in order to qualify for the full amount of protections granted to trademark owners in the United States, trademarks must first be registered with the United States Patent and Trademark Office (“USPTO”). Once a trademark is registered, the trademark will then be protected for an initial period of 10 years.

Importantly, the owner of the newly registered trademark will be required to file updates during that initial period of time with the USPTO to show that the trademark is still in use. It is also important to note that not all trademarks can be registered with the USPTO. The following is a list of common reasons why a trademark may be barred or not be allowed to be registered with the USPTO:

  • A trademark may be barred from registration if the trademark is identical or similar to an already existing trademark or related service/goods;
  • A trademark may be barred from registration if the trademark is generic. A trademark generally is said to become generic when the mark no longer identifies a particular manufacturer or source of a product, but rather a generic good
    • For example, escalator, elevator, aspirin, plastic, zipper, and linoleum may all be considered to be generic;
  • A trademark may be barred from registration if the trademark is on the list of prohibited trademarks maintained by the USPTO or on the reserved list of trademarks maintained by the USPTO; or
  • A trademark may be barred from registration if the trademark is overly descriptive to qualify for protection.

Once again, after a trademark is registered with the USPTO, the owner will then be protected against other individuals or businesses who wish to copy or duplicate their trademark. Additionally, the entire United States will be considered to have been put on notice that the specific trademark has both been created and registered. This means that a future trademark applicant would not be able to register the same or similar trademark.

What Are Other Examples of Bars to Trademark Registration?

There are several other common bars for trademark registration, including but not limited to:

  • Surnames: In general, if a trademark is associated with a surname more, and the product that it is attempting to identify less, the trademark will be barred from registration;
  • Geographic Marks: Descriptive geographic terms, such as the “Great Lakes” will generally remain public, so that any business operating in or near that area can use that place name without infringing upon a trademark.
    • Importantly, misdescriptive trademarks are not allowed to be registered. Thus, if you are using a place name in your trademark that would mislead people as to the origin or location of your goods or services, such a mark will not be allowed to be registered;
  • Immoral Marks: Any and all “offensive” trademarks are barred from registration. The offensiveness will typically be based on a reasonable person in the community standard.
    • Importantly, if the mark was offensive in the past, but has gained so much secondary meaning that the offensiveness has been eliminated, it may be eligible to be registered at that point; and
  • Functionality Marks: A trademark that is solely functional cannot be registered with the USPTO. Functional trademarks should instead seek to be registered as a patent in order to protect their functionality.
    • The Supreme Court has held that a product feature is functional if it is essential to the use or purpose of the product or if it affects the cost or quality of the product.

Why Is It Important to Search USPTOs Database for Similar Trademarks? What Is Trademark Infringement?

Before registering a trademark, an individual must conduct a thorough search through the USPTO’s database in order to determine whether any other individual or legal entity is already using the same or similar trademark. It is important to not copy or utilize another’s registered trademark, as doing so could result in your registration application being denied, as well as being sued under the theory of trademark infringement.

In short, trademark infringement is the illegal use of someone else’s trademark. There are several ways in which an individual or legal entity may be found liable for trademark infringement. Most commonly, trademark infringement occurs when someone is using the same or similar mark for commercial gain or causing damages to the original trademark owner.

For example, if an individual or entity knowingly copies a company’s logo and uses that logo on their own items without the original owner’s consent to do so, that infringing use would likely result in that individual or entity being charged with trademark infringement.

Do I Need A Lawyer For Help With Bars to Trademark Registration?

If you have any questions, concerns, or disputes associated with trademark registration, you should consult with an experienced trademark attorney. An experienced intellectual property attorney will be able to help you understand your legal rights and options in registering your trademark according to both federal law and the laws of your specific state.

An attorney will also be able to assist you in filing a civil lawsuit against any party that is infringing upon your trademark or causing your mark harm. Finally, an experienced attorney will also be able to represent you in court, as needed.

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