Trademark registrations that registered in spite of obvious objections

Trademarks can face various obstacles during the registration process, often due to potential objections based on their distinctiveness, descriptiveness, likelihood of confusion, or other grounds. Here are some of the trickiest trademark registrations (that stole the cookies!) and the common objections they encounter:

1. Descriptive Marks

Objection: Descriptive marks directly describe a quality, feature, function, or characteristic of the goods or services. Because they are not inherently distinctive, they are often rejected.

• Examples: "Cold and Creamy" for ice cream, "Fast Delivery" for courier services.
• Challenge: These marks are seen as generic or merely descriptive and do not indicate the source of the goods/services.
• The one that got away: One of the most notable examples of a descriptive trademark that was controversially registered is "Windows" by Microsoft. The term "windows" is descriptive of the graphical user interface elements used in computer operating systems, where multiple "windows" can be opened to display different applications and documents.

Why "Windows" is Considered Descriptive

Why "Windows" Was Registered

2. Generic Terms

Objection: Generic terms are common names for products or services and cannot be trademarked.

• Examples: "Computer" for computers, "Bread" for bread.
• Challenge: These terms do not distinguish the applicant’s goods or services from those of others.
• The one that got away:

  One of the most notable examples of a generic term that was controversially registered as a trademark is "Booking.com" by Booking Holdings Inc. Despite the term "booking" being generic for the service of making reservations, the company was able to secure a trademark registration for "Booking.com."

  Why "Booking.com" is Considered Generic

  1. Generic Term: The term "booking" is generic and widely used in the travel and hospitality industry to describe the act of making reservations.
  2. Descriptive Nature: Adding ".com" to a generic term typically does not transform it into a distinctive trademark, as it merely indicates an online presence.

  Registration and Controversy

  Despite the generic nature of the term "booking," Booking Holdings Inc. successfully registered "Booking.com" as a trademark. This registration has been controversial for several reasons:

  1. Generic Use in the Industry: Many competitors in the travel industry use the term "booking" as part of their services, leading to concerns that granting trademark protection to "Booking.com" could unfairly limit the use of a common term.
  2. Legal Precedents: The U.S. Patent and Trademark Office (USPTO) initially refused the trademark registration on the grounds that the term was generic. However, Booking Holdings Inc. appealed the decision, and the case eventually reached the Supreme Court.

  Supreme Court Decision

  In 2020, the U.S. Supreme Court ruled in favor of Booking Holdings Inc., allowing "Booking.com" to be registered as a trademark. The Court's decision was based on the notion that a generic term combined with ".com" can be protectable if it acquires distinctiveness in the minds of consumers.

  1. Acquired Distinctiveness: The Court acknowledged that while "booking" is generic, "Booking.com" had acquired distinctiveness due to its extensive use and recognition by consumers as a specific source for travel reservations.
  2. Consumer Perception: The ruling emphasized the importance of consumer perception, stating that if consumers recognize "Booking.com" as a brand rather than a generic term, it can be eligible for trademark protection.

  Implications and Challenges

  The Supreme Court's decision to allow the registration of "Booking.com" has several implications:

  1. Potential for Overreach: Critics argue that the decision could set a precedent for other companies to register generic terms combined with ".com," potentially leading to monopolization of common terms and stifling competition.
  2. Balancing Act: The ruling highlights the challenge of balancing trademark protection with the need to keep generic terms available for public use. The decision underscores the significance of consumer perception in determining trademark eligibility.

  Examples of Legal and Market Reactions

  1. Competitor Concerns: Competitors in the travel industry have expressed concerns about the potential for Booking Holdings Inc. to challenge their use of the term "booking" in domain names and marketing materials.
  2. Legal Precedents: The case may influence future trademark applications and disputes involving generic terms combined with top-level domains (TLDs).

  The registration of "Booking.com" as a trademark illustrates the complexities and contentious nature of trademark law, particularly when dealing with generic terms. The Supreme Court's decision emphasizes the role of consumer perception in determining trademark eligibility, even for terms that are otherwise considered generic. This case serves as a significant example of how legal interpretations can evolve, impacting both trademark holders and the competitive landscape.

3. Likelihood of Confusion

Objection: A trademark application can be rejected if it is likely to cause confusion with an existing trademark.

• Examples: "Puma" for a new brand of shoes might be confused with the existing "Puma" sportswear brand.
• Challenge: This objection arises when the new mark is similar in sound, appearance, or meaning to an existing mark, especially if the goods/services are related.
• The one that got away:

  A notable example of a mark that was objected to based on a likelihood of confusion under Section 2(d) of the Lanham Act, but which was registered despite controversy, is the case involving "The Slants". This case primarily revolved around a Section 2(a) refusal due to alleged disparagement, but it also faced challenges related to likelihood of confusion.

  Background

  The Slants is a band founded by Simon Tam, composed of Asian-American members. The band sought to reclaim and reappropriate a racial slur used against Asians. In addition to the Section 2(a) issues, the application faced scrutiny under Section 2(d) for likelihood of confusion with existing marks.

  The Trademark and Its Controversy

  • Mark: "The Slants"
  • Objections: The primary objection was based on Section 2(a) of the Lanham Act, which prohibits the registration of marks that may be disparaging. However, there were also objections under Section 2(d) concerning potential confusion with existing registered marks.
  • Existing Marks: Objections under Section 2(d) suggested potential confusion with other marks that include the word "slant" or similar phonetic elements, though specific conflicting marks are less documented due to the prominent Section 2(a) focus.

  Legal Journey and Outcome

  1. USPTO Refusal: The United States Patent and Trademark Office (USPTO) initially refused the application for "The Slants" on both Section 2(a) and Section 2(d) grounds.
  2. Appeal Process: Simon Tam appealed the decision, primarily focusing on the First Amendment implications of the Section 2(a) refusal, but the Section 2(d) objections were also part of the legal considerations.
  3. Supreme Court Ruling: The case ultimately reached the Supreme Court, which ruled in Matal v. Tam (2017) that the disparagement clause of Section 2(a) violated the First Amendment. This decision overshadowed but did not negate the Section 2(d) objections.
  4. Registration Granted: Following the Supreme Court decision, the mark "The Slants" was allowed to proceed to registration, despite the initial objections.

  Implications and Analysis

  • First Amendment Victory: The ruling was a significant victory for free speech, emphasizing that the government cannot refuse trademark registration based on the viewpoint expressed by the mark.
  • Likelihood of Confusion: The Section 2(d) objections, while less publicized, highlighted the complexities of trademark law where marks that are potentially confusingly similar still manage to secure registration, particularly when overshadowed by more prominent legal issues.
  • Controversy: The case underscores the controversial nature of trademark registration when balancing public policy, free speech, and the potential for consumer confusion.

  "The Slants" case is a prominent example of a trademark that faced objections based on a likelihood of confusion but was registered anyhow due to overriding legal considerations. It serves as a key case in understanding the interplay between different grounds for refusal and the broader implications of trademark law in protecting both brand identity and free speech.

4. Surnames

Objection: Trademarks that are primarily merely surnames can be difficult to register unless they acquire distinctiveness.

• Examples: "Smith" for a clothing line.
• Challenge: Surnames must show that they have acquired secondary meaning and are associated with a particular source in the minds of the public.
• The one that got away:

  One notable example of a trademark that was initially objected to based on a surname refusal but was ultimately registered is the mark "McDonald's." While the McDonald's case did not face the typical surname refusal under Section 2(e)(4) of the Lanham Act, it provides an illustrative example of how a surname can become a strong, distinctive mark over time, despite initial objections.

  Background on Surname Refusal

  Under Section 2(e)(4) of the Lanham Act, a trademark application can be refused if the mark is "primarily merely a surname." The rationale is that surnames are considered common property and should be available for use by others with the same surname. To overcome a surname refusal, the applicant must demonstrate that the mark has acquired distinctiveness or secondary meaning, making it identifiable with the applicant's goods or services.

  The McDonald's Case

  • Mark: "McDonald's"
  • Initial Objections: Although McDonald's Corporation did not face a straightforward surname refusal, the name "McDonald" is indeed a common surname. The name "McDonald" would typically face scrutiny under Section 2(e)(4) if it were not for the significant secondary meaning it had acquired.
  • Acquired Distinctiveness: Over the years, "McDonald's" has become synonymous with fast food restaurants globally. The brand's extensive use, advertising, and market presence have created a strong association between the name "McDonald's" and its specific services, far beyond its origins as a surname.

  Overcoming Surname Refusal

  1. Secondary Meaning: McDonald's demonstrated that the name had acquired distinctiveness through extensive and continuous use in commerce. The public primarily associates the name "McDonald's" with the fast food chain, rather than as a common surname.
  2. Brand Recognition: The company's significant advertising and branding efforts have solidified the name as a distinctive trademark. The Golden Arches, Ronald McDonald, and various slogans have further reinforced the brand's identity.
  3. Market Presence: The widespread presence of McDonald's restaurants and their consistent quality and service have contributed to the brand's strong association with fast food services.

  Legal Considerations

  • Trademark Registration: Despite the potential for a surname refusal, McDonald's successfully registered its name as a trademark due to its acquired distinctiveness. The USPTO recognizes that the primary significance of the mark to the public is as a brand identifier, not merely a surname.
  • Trademark Law Evolution: The McDonald's case illustrates how trademark law can evolve, allowing initially generic or descriptive terms to gain trademark protection through extensive use and public recognition.

  The McDonald's trademark serves as a prime example of how a surname can become a powerful and distinctive brand identifier, overcoming potential objections related to surname refusals. This case underscores the importance of secondary meaning in trademark law and demonstrates how a common surname can be transformed into a globally recognized brand through strategic use and marketing

5. Geographical Indications

Objection: Marks that are primarily geographically descriptive or misleading about the origin of the goods/services can face rejection.

• Examples: "Napa Valley" for wines not produced in Napa Valley.
• Challenge: Geographic terms need to show that they are not primarily descriptive of the location from which the goods/services originate or are misleading.
• The one that got away:

  A notable example of a trademark that faced objections based on being geographically descriptive but was ultimately registered is "Nantucket Nectars." This case highlights how a mark initially considered geographically descriptive can overcome objections through the establishment of secondary meaning.

  Background on Geographically Descriptive Refusals

  Under Section 2(e)(2) of the Lanham Act, a mark is refused registration if it is primarily geographically descriptive of the goods or services. This means that if the primary significance of the mark is to describe the geographic origin of the goods or services, and the public would make an association between the location and the product, the mark is not registrable without proof of secondary meaning.

  The Nantucket Nectars Case

  • Mark: "Nantucket Nectars"
  • Initial Objection: The name "Nantucket" refers to a well-known island off the coast of Massachusetts. The term "Nantucket Nectars" was initially deemed geographically descriptive because it suggested that the beverages originated from Nantucket.
  • Secondary Meaning: The brand successfully argued that the term "Nantucket Nectars" had acquired distinctiveness through extensive use and consumer recognition, associating the name with a specific source of high-quality beverages rather than just the geographic location.

  Overcoming the Geographically Descriptive Refusal

  1. Extensive Use and Advertising: Nantucket Nectars provided evidence of extensive use and marketing efforts, which helped establish the brand in the minds of consumers as a unique source of beverages.
  2. Consumer Recognition: Surveys and other forms of evidence demonstrated that consumers associated "Nantucket Nectars" with the specific brand rather than solely with the island of Nantucket.
  3. Market Presence: The widespread availability and popularity of Nantucket Nectars beverages contributed to the brand's recognition and the secondary meaning of the mark.

  Legal Considerations and Decision

  • Trademark Registration: Despite initial objections, the USPTO accepted the argument of acquired distinctiveness and allowed the registration of "Nantucket Nectars" as a trademark.
  • Significance in Trademark Law: This case illustrates the importance of secondary meaning in overcoming geographic descriptiveness objections. A geographically descriptive mark can be registered if it becomes strongly associated with a particular source of goods or services in the minds of consumers.

  Implications

  The registration of "Nantucket Nectars" demonstrates that even geographically descriptive marks can achieve trademark protection if the brand can prove that the mark has acquired secondary meaning. This case serves as an example for other brands facing similar challenges, emphasizing the role of consumer perception and brand recognition in trademark law.

  The "Nantucket Nectars" trademark overcame geographic descriptiveness objections through the establishment of secondary meaning, illustrating how brands can successfully navigate and overcome such challenges. This case highlights the significance of consumer recognition and the importance of building a strong brand identity to achieve trademark protection.

6. Deceptive Marks

Objection: Deceptive marks mislead consumers about a characteristic or quality of the goods/services.

• Examples: "Silk Touch" for products that do not contain silk.
• Challenge: Deceptive marks can lead to consumer confusion and are not registerable.

7. Scandalous or Immoral Marks

Objection: Marks that are considered offensive, scandalous, or immoral are rejected.

• Examples: Marks containing profane language or offensive imagery.
• Challenge: Such marks are deemed inappropriate for trademark protection.

8. Functional Marks

Objection: Marks that consist of a product's functional aspect cannot be registered.

• Examples: The shape of a product that provides a functional benefit, like the shape of a guitar body for its sound.
• Challenge: Functional features are necessary for competition and cannot be monopolized by one entity.

9. Foreign Terms

Objection: Foreign terms that translate into descriptive or generic English terms can face similar objections as their English counterparts.

• Examples: "Le Pain" for bread (French for "bread").
• Challenge: The foreign equivalent doctrine applies, and such terms are treated as descriptive or generic in English.

Strategies to Overcome Objections

**1. Acquired Distinctiveness: Demonstrate that the mark has acquired distinctiveness (secondary meaning) through extensive use and promotion.

**2. Disclaimers: For descriptive elements within a mark, disclaiming the non-distinctive portion can sometimes help in securing registration.

**3. Evidence of Use: Providing evidence such as sales figures, advertising expenditures, and customer affidavits can support claims of acquired distinctiveness.

**4. Amendment of Goods/Services: Narrowing or amending the description of goods/services can sometimes resolve issues related to likelihood of confusion.

**5. Consent Agreements: Obtaining a consent agreement from the owner of a conflicting mark may help in overcoming objections based on likelihood of confusion.

**6. Redesign: Redesigning the mark to eliminate deceptive, scandalous, or functional elements can also be an effective strategy.

Conclusion

Navigating the trademark registration process can be challenging, particularly when dealing with marks that face obvious objections. Understanding the common objections and employing strategic approaches to address them can significantly increase the chances of successful trademark registration. Searching the Register to see if your trademark is free is crucial. Consulting with a trademark attorney is often advisable to effectively handle these complex issues.