Applicants only filed 132 trademark applications with the USPTO on July 4th (understandably), so I am going to use this post to describe a common issue that will cause the USPTO to reject an application (and thus a loss of filing fees for thee applicant) - filing a generic or merely descriptive trademark.
Generic terms are per se ineligible for trademark protection. Think of CAR DEALER for a car dealer, CAR WASH for a car wash, and GROCERY STORE for a grocery store. Can you see why generic terms are ineligible for trademark protection? They do not distinguish one's goods or services from others. Additionally, to give any one person or business a monopoly over a generic term would make it impossible for others to use that term to describe its services.
Similarly, Section 2(e)(1) of the Trademark Act (15 U.S.C. 1052(e)(1)) prevents registration of a mark that is merely descriptive of the goods or services identified in the application until that mark becomes associated with the applicant. Think of QUICK AND CLEAN as it relates to car wash services. These marks can only be registered after they obtain "acquired distinctiveness," meaning that the applicant has been using the mark long enough that consumers view it as associated with the applicant's goods or services rather than as a general, descriptive term.
While browsing the July 4th filings, I noticed that an individual in Iowa filed an application for TRAUMA-SENSITIVE YOGA AND RESILIENCY TRAINING FOR FIRST RESPONDERS as it relates to - you guessed it - trauma-sensitive yoga and resiliency training for first responders. The applicant went so far as to use the mark in the actual description of the services. I predict an office action citing a Section 2(e)(1) merely descriptive refusal when this application is assigned to an examining attorney within the next three months.
The above trademark, which was filed by an individual, also demonstrates the importance of consulting with an attorney prior to filing a trademark application. In this case, working with an attorney would have saved the applicant's $275 filing fee, which is probably lost now.
Post a Comment