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Right to Register Analysis (including Distinctiveness Analysis)

The mark and specimen for a trademark application should be reviewed and analyzed for potential refusal to register for any of these reasons:

* The subject matter does not function as a mark because it

* The proposed mark comprises immoral or scandalous matter;

* The proposed mark is deceptive;

* The proposed mark comprises matter that may disparage or falsely suggest a connection with persons, institutions, beliefs, or national symbols, or bring them into contempt or disrepute

the proposed mark comprises the flag, coat of arms or other insignia of the United States or any State, municipality, or foreign nation;

 * The applicant’s use of the mark is or would be unlawful because it is prohibited by statute;

* The proposed mark comprises a name, portrait or signature identifying a particular living individual without the individual’s written consent, or the name, portrait or signature of a deceased president of the United States during his widow’s life, without written consent of the widow;

* The proposed mark is merely descriptive (not distinctive) or deceptively misdescriptive of the applicant’s goods and/or services;

* The proposed mark is primarily geographically descriptive of the applicant’s goods and/or services;

* The proposed mark is primarily geographically deceptively misdescriptive of the applicant’s goods and/or services; or

* The proposed mark is primarily merely a surname.

See Grounds for Refusal for more information.


Merely Descriptive v. Distinctive Analysis: A proposed trademark must be distinctive rather than merely descriptive to be registered on the Principal Register. Words that are merely descriptive describe the Purpose, Characteristic, Quality, Use/Users, Ingredient, Function, or Features of a good or service in part or in whole. A proposed trademark may be made up of a composite of distinctive and descriptive terms with a disclaimer made on the descriptive words. Each use of terms in a trademark application is subject to the facts of the situation and no general rules apply (i.e., ‘apple’ is generic for a type of fruit but is inherently distinctive for a type of computer).


Correctly identifying descriptive or generic terms in a composite term that contains both merely descriptive or generic terms and inherently distinctive or suggestive terms and disclaiming the distinctive or generic terms saves time. The Trademark Office may require a disclaimer as a condition of registration if the mark is merely descriptive for at least one of the products or services involved. If the disclaimer is not included in the original registration, a delay in registration of several months for each round of refusals will result from the extra time it takes to get the First Office Action (currently about 3 months) and respond to it correctly (have up to 6 months to respond) and wait for the examiner to make an amendment. Multiple office actions often take place where one change leads to another refusal. Failure to comply with a disclaimer requirement is grounds for refusal of registration.


If a term is merely descriptive but has acquired distinctiveness through secondary meaning, the mark may be able to be registered on the Principal Register under §2(f).  


37 C.F.R. PART 2-RULES OF PRACTICE IN TRADEMARK CASES

§ 2.41 Proof of distinctiveness under § 2(f).

(a) When registration is sought of a mark which would be unregistrable by reason of § 2(e) of

the Act but which is said by applicant to have become distinctive in commerce of the goods or

services set forth in the application, applicant may, in support of registrability, submit with the

application, or in response to a request for evidence or to a refusal to register, affidavits, or

declarations in accordance with § 2.20, depositions, or other appropriate evidence showing

duration, extent and nature of use in commerce and advertising expenditures in connection

therewith (identifying types of media and attaching typical advertisements), and affidavits, or

declarations in accordance with § 2.20, letters or statements from the trade or public, or both, or

other appropriate evidence tending to show that the mark distinguishes such goods.


(b) In appropriate cases, ownership of one or more prior registrations on the Principal Register

or under the Act of 1905 of the same mark may be accepted as prima facie evidence of

distinctiveness. Also, if the mark is said to have become distinctive of applicant’s goods by

reason of substantially exclusive and continuous use in commerce thereof by applicant for the five

years before the date on which the claim of distinctiveness is made, a showing by way of

statements which are verified or which include declarations in accordance with § 2.20, in the

application may, in appropriate cases, be accepted as prima facie evidence of distinctiveness. In

each of these situations, however, further evidence may be required.


Many  trademark refusals can be avoided or overcome by using Not Just Patents ® Trademark Services to help create an inherently distinctive mark, search for conflicting marks, use the mark properly as a mark, submit a proper specimen, properly disclaim any unregisterable components, correctly choose the applicable goods and services, and fill out the application correctly. Call 1-651-500-7590   for more information.

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PO Box 18716, Minneapolis, MN 55418  

1-651-500-7590    

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Call 1-651-500-7590 or email WP@NJP.legal for Responses to Office Actions; File or Defend an Opposition or Cancellation; Trademark Searches and Applications; Send or Respond to Cease and Desist Letters.

For more information from Not Just Patents, see our other sites:      

Steps to a Patent    How to Patent An Invention

Should I Get A Trademark or Patent?

Trademark e Search    Strong Trademark     Enforcing Trade Names

Common Law Trademarks  Trademark Goodwill   Abandoned Trademarks

Patentability Evaluation

Chart of Patent vs. Trade Secret

Patent or Trademark Assignments

Trademark Disclaimers   Trademark Dilution     TSDR Status Descriptors

Oppose or Cancel? Examples of Disclaimers  Business Name Cease and Desist

Sample Patent, Trademark & Copyright Inventory Forms

Verify a Trademark  Be First To File    How to Trademark Search

Are You a Content Provider-How to Pick an ID  Specimens: webpages

How to Keep A Trade Secret

State & Federal Trade Secret Laws

Using Slogans (Taglines), Model Numbers as Trademarks

Which format? When Should I  Use Standard Characters?

Shop Rights  What is a Small or Micro Entity?

Patent Drawings

Opposition Pleadings    UDRP Elements    

Oppositions-The Underdog    Misc Changes to TTAB Rules 2017

How To Answer A Trademark Cease and Desist Letter

Converting Provisional to Nonprovisional Patent Application (or claiming benefit of)

Trademark Refusals    Does not Function as a Mark Refusals

How to Respond to Office Actions

What is a Compact Patent Prosecution?

Acceptable Specimen       Supplemental Register   $224 Statement of Use

How To Show Acquired Distinctiveness Under 2(f)

Patent search-New invention

Patent Search-Non-Obvious

Trademark Attorney for Overcoming Office Actions Functional Trademarks   How to Trademark     

What Does ‘Use in Commerce’ Mean?    

Grounds for Opposition & Cancellation     Cease and Desist Letter

Trademark Incontestability  TTAB Manual (TBMP)

Valid/Invalid Use of Trademarks     Trademark Searching

TTAB/TBMP Discovery Conferences & Stipulations

TBMP 113 Service of TTAB Documents  TBMP 309 Standing

Examples and General Rules for Likelihood of Confusion

USPTO Search Method for Likelihood of Confusion

Examples of Refusals for Likelihood of Confusion   DuPont Factors

What are Dead or Abandoned Trademarks?

 Can I Use An Abandoned Trademark?

Color as Trade Dress  3D Marks as Trade Dress  

Can I Abandon a Trademark During An Opposition?

Differences between TEAS and TEAS plus  

How do I Know If Someone Has Filed for An Extension of Time to Oppose?

Ornamental Refusal  Standard TTAB Protective Order

SCAM Letters Surname Refusal


What Does Published for Opposition Mean?

What to Discuss in the Discovery Conference

Descriptive Trademarks Trademark2e.com  

Likelihood of Confusion 2d

Acquired Distinctiveness  2(f) or 2(f) in part

Merely Descriptive Trademarks  

Merely Descriptive Refusals

ID of Goods and Services see also Headings (list) of International Trademark Classes

Register a Trademark-Step by Step  

Protect Business Goodwill Extension of Time to Oppose

Geographically Descriptive or Deceptive

Change of Address with the TTAB using ESTTA

Likelihood of confusion-Circuit Court tests

Pseudo Marks    How to Reply to Cease and Desist Letter

Not Just Patents Often Represents the Underdog

 Overcome Merely Descriptive Refusal   Overcome Likelihood Confusion

Protecting Trademark Rights (Common Law)

Steps in a Trademark Opposition Process   

Section 2(d) Refusals   FilingforTrademark.com

Zombie Trademark  

What is the Difference between Principal & Supplemental Register?

Typical Brand Name Refusals  What is a Family of Marks? What If Someone Files An Opposition Against My Trademark?

How to Respond Office Actions  

DIY Overcoming Descriptive Refusals

Trademark Steps Trademark Registration Answers TESS  

Trademark Searching Using TESS  Trademark Search Tips

Trademark Clearance Search   DIY Trademark Strategies

Published for Opposition     What is Discoverable in a TTAB Proceeding?

Counterclaims and Affirmative Defenses


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