Don’t Try to Register an "Incapable Informational Mark"

by AEON Law on February 21, 2017

image
By David Shankbone – Own work, CC BY 3.0, https://commons.wikimedia.org/w/index.php?curid=17379884

The US Patent and Trademark Office (USPTO) has recently updated its draft examination guide and listed types of marks that are considered “informational” and otherwise not eligible for trademark protection.

According to the USPTO,

The set of wording held as merely informational by case law is growing. Marks that include this wording must be refused because they do not identify the source of the goods or services.

The list is illustrative rather than exhaustive, and includes the following:

  • Matter that is used in a manner merely to convey information about the goods/services;
  • Matter that is a widely used message; and
  • Matter that is a direct quotation, passage, and/or citation from a religious text.

Matter that is merely informational includes these examples from the USPTO:

  • The mark FRAGILE for labels and bumper stickers failed to function as a mark because it alerted consumers to the fragility of any goods on which the labels and bumper stickers were used. By presenting the term across the face of the labels, the term informed consumers of the fragility of the item to which the labels and stickers were attached rather than indicate the source of the labels and bumper stickers.
  • The mark SPECTRUM for illuminated pushbutton switches failed to function as a mark, supported by the meaning of the term informing customers of the multiple color feature of the goods and the evidence of the term listed on the specimen among the features of the product.
  • The mark GUARANTEED STARTING for motor vehicle services failed to function as a mark for applicant’s services of winterizing vehicles and vehicle starting services because it merely conveyed to consumers the normal meaning of the wording that using the applicant’s services would guarantee that the consumer’s car will start.

“Widely-Used Messages” include “Occupy Wall Street,” “DRIVE SAFELY,” and “THINK GREEN.”

According to the USPTO,

The types of widely used messages addressed here are those that are commonplace and those that are social, political, religious, or other types of messages and expressions. The “commonplace” category is intended to describe wording, such as DRIVE SAFELY, that has become so common or ordinary that consumers will primarily associate the wording with a particular well-recognized, everyday meaning rather than viewing the wording as an indicator of source for the goods or services.

Marks that can’t be registered based on social, political, religious, and similar messages include:

  • The mark ONCE A MARINE, ALWAYS A MARINE for clothing
  • The mark ONE NATION UNDER GOD for charity bracelets
  • The mark NO MORE RINOS! for various goods, including bumper stickers, signs and t-shirts
  • The hypothetical mark KEEP CALM AND FOLLOW JESUS for t-shirts

The USPTO is accepting public feedback on the new guide until March 15, 2017.

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