Friday, September 18, 2015

Today's Tip For Saving Your Trademark Filing Fee - Avoid Descriptive Trademarks

If you want to successfully obtain a federal trademark registration, you must avoid trademarks that are generic or highly descriptive of your goods or services. With few exceptions, these terms are incapable of serving as trademarks and cannot be registered.

A good example of a trademark that will probably be refused registration for being generic and/or highly descriptive is a trademark application filed on September 12th for DOLPHIN AND SNORKEL TOURS. The services listed on the application are "[c]onducting guided tours of dolphins and snorkeling sites." This is a problem.

As stated above, a trademark will be refused registration if it is generic in relation to the listed goods or services, or is merely descriptive of them. Section 2(e)(1) of the Trademark Act prohibits these types of marks from being registered, namely because the law believes anybody should be entitled to use generic or descriptive terms to describe their goods or services. Imagine how difficult it would be to describe your car wash if someone else obtained a trademark registration for CAR WASH as it relates to car washing services and therefore prohibited you from using the term in conjunction with your business. It wouldn't be fair.

According to Section 1209.01(b) of the Trademark Manual of Examining Procedure (TMEP), a trademark is merely descriptive if it "describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services [listed in the application]."

Section 1209.01(c) describes a generic term as a term "the relevant purchasing public understands primarily as the common or class name for the goods or services." The test for whether a term is generic is "(1) [w]hat is the genus of goods or services at issue? and (2) [d]oes the relevant public understand the designation primarily to refer to that genus of goods or services?" TMEP 1209.01(c)(i).

Do you see any issues with DOLPHIN AND SNORKEL TOURS as it relates to "[c]onducting guided tours of dolphins and snorkeling sites"? At the very least, the trademark is merely descriptive of the services the applicant listed and thus will be refused registration under 2(e)(1) of the Trademark Act. Expect an office action when this application is assigned to an examining attorney at the Trademark Office in approximately three months.

There are limited exceptions to 2(e)(1), such as using the mark continuously for more than five years, but the applicant's first use date is in 2013 (five continuous years does not guarantee that you will overcome a 2(e)(1) refusal anyway).

Notably, the applicant did not appear to work with an attorney on this trademark application. If it had, the attorney could have pointed out these issues and helped save the applicant's $225 filing fee, which is likely lost now.

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