4.7 Bars to Trademark

The Prior Use Bar

No one can register a trademark if it has been used by other parties prior to its use by the applicant. Indeed, if the applicant uses such a mark, he or she may be liable for trademark infringement.^xxviii The only exception to the prior use bar is when the mark has been used in an entirely different market or field of business, as in the trademark “Progressive” granted to two companies, one a backpack manufacturer and the other an auto insurance company.

The Functionality Bar

To be trademarked, no word, symbol, design, device, scent, or sound may purely or primarily serve a functional purpose. Nor can it be trademarked if its absence in or on the product inflates its cost or reduces its quality.^xxix

Thus as noted earlier, the scent of a perfume cannot be trademarked because the core requirement of a perfume is that it have a pleasant and distinctive smell.

The design of a chair presents an interesting dilemma, however. Does the design enable a person to sit—i.e., does it have a functional purpose? Or does the design distinctively mark an otherwise perfectly functional chair as coming from an identifiable producer?

This “chicken and egg” question has confronted many applicants, trademark examiners, judges, and juries over the years. The issue is usually decided by asking whether the appearance of a product or its components is inspired more 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 of the product. A great example of this is the “A Christmas Story Leg Lamp” based on the classic 1983 film comedy. The functional part of the lamp is its electronics and 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, and it is trademarked (No. 77105065).

Subject Matter Bars

In addition to prior use and functionality, certain kinds of subject matter are generally not eligible for trademark registration. These are surnames, geographic marks, and ornamental, immoral, or offensive marks.^xxx

Surnames or family names such as “Smith” and “Johnson” 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^xxxi

“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.^xxxii But over time, if the surname becomes associated in the public mind with the distinctive origin of products or services, then it may be eligible for a trademark, as is the case with “Sears” and “Macy’s.”

Figure 4.11 Macy’s the brand name of the department store chain—is an example of a surname that has become eligible for trademark protection. (credit: photograph by Mike Mozart via flikr / CC BY 2.0)

Geographic marks must also be evaluated for eligibility on the basis of several factors. If a geographic mark is simply 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.^xxxiii

The test above 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 in Los Angeles.

The goal of the bar against geographically descriptive marks, then, is to protect one party from seizing ownership of a geographic term that ought to remain in the public domain.

If a geographic mark is deceptively 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 geographic place identified in the mark.
• The misrepresentation is a material factor in a significant portion of the relevant consumer’s decision to buy the goods or use the services.^xxxiv

The goal of this test for geographically misdescriptive marks is to prevent the confusion and deception of the consumer. For example, if an entrepreneur launches a fashionable shoe business called “New York Shoes” but actually 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’s trademark “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 sold by the retailer come from the Amazonian region of South America. In addition, the geographic nature of the name “Amazon” is not a significant factor in whether or not consumers decide to purchase books, clothing, electronics, or anything else from the company.

Nor can ornamental, immoral, or offensive marks be trademarked. Ornamental marks such as a “smiley face” logo are merely decorative and are too vague to distinguish the origin of a product or service. Immoral or offensive marks—e.g., an online dating service with a logo depicting two naked people having sex—also cannot be registered.