Lecture 30: Bars to Trademark Registration

[Music] What prohibits certain types of trademarks
from being registered? A trademark cannot be registered if it has
been previously used by other parties. If applicants use such a mark, they may be
liable for trademark infringement. The only exception to the prior use bar is
when the mark has been used in a different market. The sole purpose of a trademark is to represent
the entity which manufactured it. To qualify for trademark protection, the trademark
itself should not serve a functional purpose, and removing it should not reduce the product’s
functionality or objective value. The design of a chair presents a dilemma,
however. Does the design enable a person to sit, thereby
serving a functional purpose? Or does the design distinguish an otherwise
functional chair as the product of a specific producer? The deciding question in such cases typically
revolves around whether a product’s appearance was inspired by design or by function. The issue is most easily decided when the
functionality of an item resides in a specific part of the product, and the design elements
are found in other parts. A great example of this is the leg lamp from
the classic 1983 comedy “A Christmas Story.” The functional part of the lamp is the light
fixture sitting atop the base. The base, however, is in the shape of a woman’s
stocking-clad leg, and is thus clearly a design feature that distinguishes the lamp from any
other on the market. It is therefore trademarked. What is ineligible for trademark? Certain kinds of subject matter are generally
ineligible for trademark registration. These are surnames, geographic marks, and
ornamental, immoral, or offensive marks. Surnames cannot be trademarked except under
certain conditions. The USPTO assesses five factors in determining
whether a surname is eligible for a trademark: Whether the surname is rare, whether the term
is the surname of anyone connected with the applicant, whether the term has any recognized
meaning other than as a surname, whether it has the “look and feel” of a surname,
whether the stylization of lettering is distinctive enough to create a separate commercial impression. “If the mark’s character as a surname
predominates in terms of its ‘primary significance to the purchasing public,’ then it is prohibited,”
write Miller and Davis. But if, over time, the surname becomes associated
in the public’s mind with a distinctive retailer or company, then it may be eligible
for a trademark, as is the case with “Sears” and “Macy’s.” Geographic marks must also be evaluated for
eligibility based on several factors. If a geographic mark is descriptive, the following
tests apply: The primary significance of the mark is a
generally known geographic location. The goods or services originate in the place
identified in the mark. Purchasers would be likely to believe that
the goods or services originate in the geographic place identified in the mark. This test determines whether there is a literal
association to the name or not. For example, if an entrepreneur launches a
company called “Los Angeles Shoes” to produce shoes in Los Angeles, the name would
not pass the test for trademark eligibility because the primary significance of the mark
is that it is a generally known location, the product is produced in the location stated
in the mark, and consumers would believe the shoes were made there. The bar against geographically descriptive
marks is intended to protect one party from seizing ownership of a geographic term that
should remain in the public domain. If a geographic mark is misdescriptive, however,
the test is as follows: The primary significance of the mark is a generally known geographic
location. The goods or services do not originate in
the place identified in the mark. Purchasers would be likely to believe that
the goods or services originate in the place identified in the mark. The misrepresentation is a material factor
in deciding whether to buy the goods or use the services for a significant portion of
the relevant consumers. The goal of this test is to prevent confusing
or deceiving the consumer. For example, if an entrepreneur launches a
shoe business called “New York Shoes” but manufactures the shoes in China, he will
not receive a trademark for the name because it will likely confuse or deceive consumers. Sometimes, however, a geographic name may
be trademarked, as was the case with the online retailing giant “Amazon.” In this case, the geographic name “Amazon”
is not indicative of the source of goods, nor are consumers under the impression that
the goods come from the Amazon. In addition, the geographic nature of the
name “Amazon” is not a significant factor in whether consumers decide to purchase products. Ornamental, immoral, or offensive marks cannot
be trademarked either. Ornamental marks, such as a “smiley face”
logo, are merely decorative, and too vague to distinguish the origin of a product or
service. Immoral or offensive marks—for example,
an online dating service with a logo depicting two naked people having sex—also cannot
be registered.

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