Bohan Mathers: What Can and Cannot be a Registered U.S. Trademark?

What Can You Use to Make Your Mark?

Previous Page - Next Page
Trademark Contents
Home

In choosing the symbol that will stand for a product in the minds of consumers, all of the factors governing what may and may not be, or become, a registered U.S. trademark should be carefully considered. As a general rule, almost anything may be used as a mark (trademark, service mark, collective membership mark, or certification mark) to identify goods and/or services, so that what cannot be registered (see below) may be more thought-provoking.

Registrable Marks

A trademark or service mark (generally a "mark") that may be registered in the United States can be made up of one or more of any number of elements. Most marks consist of words. However, marks may be only letters or only numbers or combinations of letters and numbers. They may be initials or acronyms. They may be single words, phrases, sentences, slogans, or exposition. Marks may contain recognizable words in any language, or fanciful terms, or nonsense. Within certain limits, they may be or may contain names. The text may or may not be written in a particular, stylized lettering. Marks may contain punctuation and typographical symbols used in the usual way or used in a graphical or connotative manner. Marks may also be simply designs, alone, comprised of one or more graphical elements, or they can be combinations of text and designs, and a color, a sound, or even a scent may be a specific element of a mark.

This expository mark for spirits, consisting of 51 words, is not unusually long for such marks.

Aftershave Bottle & Floss Container The shape of the product^[5], or of the package in which the product is marketed, or of an element of the packaging, can also comprise a mark or an element of a mark. This type of trademark, called a configuration mark, is often referred to as "trade dress."

A mark can also consist of just a color, just a scent, odor, or fragrance^[note], or just sound. Perhaps the best known example of a color-only mark is the distinctive pink that distinguishes Owens-Corning insulation products. And there are any number of easily recognizable sound-only marks. For example, the familiar three tones of the chimes constitute a registered trademark of the National Broadcasting Company, and the sound of Leo the Lion's roar is a registered trademark for MGM motion pictures.

(See the list of registrations obtained through our firm for examples of the variety of matter that may be registered.)

Marks That Cannot Be Registered

Anything used to identify the particular source, maker, or provider of products or services traded in the market place is, by definition, a trademark or a service mark, but certain marks by their nature will not be accorded the specific benefits and protection of U.S. registration. In the first place, any mark that has not been used in interstate (or international) commerce cannot win a federal registration. In addition, trademark law specifically prohibits the registration of certain other types of marks that are best described in the words of the federal statute itself (15 U.S.C. §1052) ...

"No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it --

"(a) Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.

"(b) Consists of or comprises the flag or coat of arms^[note] or other insignia of the United States, or of any State or municipality, or of any foreign nation, or any simulation thereof.

"(c) Consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow.

"(d) Consists of or comprises a mark which so resembles [another] mark ... as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive: Provided, That [some marks may meet the requirements for Concurrent Registration] ...

"(e)^[note] Consists of a mark which, (1) when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them, or (2) when used on or in connection with the goods of the applicant is primarily geographically descriptive or ... (3) deceptively misdescriptive of them, except as indications of regional origin may be registrable [as collective or certification marks] ...

"... or (4) is primarily merely a surname."

Note: The information about the trademarks and service marks that appear on this page is taken from the public records of the U. S. Patent and Trademark Office. These marks have been chosen as examples. None of the named companies sponsor this page or have any affilliation with our firm, and the use of their marks as examples does not indicate in any way their endorsement of this site -- nor our endosement of their products.

Next Page
Previous Page
Trademark Contents
Top - Home

The Fine Print:

The information provided in this Web site summarizes some of the laws, regulations, and other considerations related to intellectual property. Neither the information you find here nor anything posted in the Internet should be taken in lieu of sound legal advice given within an attorney/client relationship.