What we can’t Trademark in USA


Anything and everything can’t be trademarked in USA, as there are certain criteria those needs to be fulfilled before a trademark is approved. Hence, it is important to meet those criteria while submitting an application for a trademark in USA. As per the United States Trademark Statutory rules any or all marks can’t be deemed valid for federal registration. Section 2 of the Lanham Act or Trademark Act, 15 U.S.C. § 1052, provides many restrictions as to those trademarks that may not be federally registered on the United States Patent and Trademark Office’s (USPTO) Principal Register. There are many conditions but here are a few. The details of these rules can be found at Trademark Manual of Examining Procedure April 2016.

Trademark in United States

Below are some of the important rules and regulations those are mentioned in this act which an applicant should abide while filing a trademark in USA.

  • 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; or a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods and is first used on or in connection with wines or spirits by the applicant on or after one year after the date on which the WTO Agreement (as defined in section 3501(9) of title 19) enters into force with respect to the United States.

You must remember the case of “REDSKINS” trademark which was denied by the USPTO Trademark Trial and Appeals Board (TTAB) a few months back. This section 2(a) is the only basis through which the trademark was denied.

  • Consists of or comprises 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.
  • 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.

You must remember the case of “OBAMA BAHAMA PAJAMAS” that was filed with the U.S. trademark office back in 2008. Though initially it was approved but later on it was abandoned after various objections. Similarly, “BARACK’S JOCKS DRESS TO THE LEFT” trademark was denied on the ground that the applicant couldn’t furnish signed consent by President Obama.

  • Consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, 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 if the Director determines that confusion, mistake, or deception is not likely to result from the continued use by more than one person of the same or similar marks under conditions and limitations as to the mode or place of use of the marks or the goods on or in connection with which such marks are used, concurrent registrations may be issued to such persons when they have become entitled to use such marks as a result of their concurrent lawful use in commerce prior to:
  • the earliest of the filing dates of the applications pending or of any registration issued under this chapter;
  • July 5, 1947, in the case of registrations previously issued under the Act of March 3, 1881, or February 20, 1905, and continuing in full force and effect on that date; or

(3) July 5, 1947, in the case of applications filed under the Act of February 20, 1905, and registered after July 5, 1947. Use prior to the filing date of any pending application or a registration shall not be required when the owner of such application or registration consents to the grant of a concurrent registration to the applicant. Concurrent registrations may also be issued by the Director when a court of competent jurisdiction has finally determined that more than one person is entitled to use the same or similar marks in commerce. In issuing concurrent registrations, the Director shall prescribe conditions and limitations as to the mode or place of use of the mark or the goods on or in connection with which such mark is registered to the respective persons.

The 2 (d) is the legal basis of rejection of most of the trademark-related cases in the United States wherein they are deemed to increase the likelihood of confusion.

(e) 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,

(2) When used on or in connection with the goods of the applicant is primarily geographically descriptive of them, except as indications of regional origin may be registrable under section 1054 of this title,

(3) When used on or in connection with the goods of the applicant is primarily geographically deceptively misdescriptive of them,

(4) Is primarily merely a surname, or

(5) Comprises any matter that, as a whole, is functional.

Section 2(e) is the legal basis on which various trademarks are denied on the ground of being descriptive, geographically descriptive or functional.

All we can say is that getting trademark in USA is subject to many conditions and if your trademarks meet all these conditions then only it is granted.

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