Category — procedure

Many business owners want to use as a trademark or service mark a phrase that incorporates their geographic location. For example, a house cleaning service in Charlotte might want to apply for the service mark “CHARLOTTE MAIDS”. Like immoral, deceptive, or scandalous marks, geographically descriptive marks may not be registered on the Principal Register at the Patent and Trademark Office.

Section 1052 of the Lanham Act forbids registration of not only geographically descriptive marks, but also marks that are primarily geographically deceptively misdescriptive. An example might be, using our scenario above, if our Charlotte-based house cleaning service attempted to register the service mark “NEW YORK MAIDS”. The Lanham Act does provide an exception for marks that act as an indicator of regional origin, which I’ll discuss in a future post.

Business owners should take this into account when thinking of a service mark for a new service or product.

In my post on the trademark application process, I wrote about the examination and opposition of your application. These are two distinct processes, but many parts overlap. One area where the examination process and the opposition process overlaps concerns grounds for refusing registration of your proposed mark.

Section 1052 of the Lanham Act states that an application shall not be refused registration unless it fails to meet one or more standards. The first item listed prohibits the registration of an application that is “immoral, deceptive, or scandalous”. What determines whether a mark is immoral, deceptive, or scandalous? Various tests have been crafted by the Trademark Trial and Appeal Board and the courts, but as a business owner, you should be aware that an examiner or an opposer may try to refuse your application to register your mark on this basis.

Recent examples of marks that have been challenged on the basis that the mark was immoral, deceptive, or scandalous include DYKES ON BIKES and COCAINE (for soft drinks).

Here’s a typical scenario for small business owners: Al, a new business owner chooses a mark for his new product without first clearing his mark. He spends hundreds, if not thousands, of dollars on advertising for his new product and begins to use his new mark in commerce. A month later, Bob, who owns a mark that he has used in commerce for many years, sends a cease and desist letter to the Al and demands that Al stop using his mark in commerce. Al has now lost thousands of dollars in advertising costs, packaging costs, and other costs associated with using the mark in commerce.

Business owners who want to use a mark in commerce should clear their mark first. What does it mean to “clear your mark”? Briefly, clearing your mark means searching through all of the registered marks and common law uses of a mark to ensure that no one else is using the same or similar mark in connection with the same or similar goods or services. Trademark attorneys use commercial services to search through databases filled with large datasets to find prior uses.

As previously noted on this blog, trademark rights in the United States are based on use: the first person to use a mark in commerce has priority rights to that mark. Therefore, if someone else is already using a mark similar to the mark you have chosen, then they have may have prior rights to use the mark. If so, you may have to stop using your mark in commerce. This may also prevent you from registering your trademark if a prior user opposes your mark during the application process or if the examiner believes that the marks are so similar such that the public is likely to confuse the source of the goods or services associated with the marks.