While a common issue for rejecting a trademark application is "likelihood of confusion," according to the U.S. Patent and Trademark Office, there are many other issues that can disqualify a registration. Since applying for a trademark registration takes a minimum $325 filing fee as of 2011, and additional fees for filing amendments and extensions could arise, applicants should understand the basic issues that define what can be a legal trademark.
Use in Commerce
A trademark is a word, phrase, design or symbol, or any combination of those, used to identify the source of a class of goods or services sold in commerce. The Trademark Office will not grant a registration unless it's provided with evidence that the trademark is used in this manner, such as a mark on a label attached to a piece of clothing, or on the packaging that contains the goods protected by the trademark. In the case of a service mark, the mark can be shown in use with advertising or brochures promoting the service being offered. You can file an application on an "intent to use" basis, but evidence of actual use must be submitted before a trademark is registered.
Likelihood of Confusion
Your trademark cannot be so similar to existing trademarks, or marks in a pending application with an earlier filing date than yours, that there is a likelihood of confusion among consumers on the source of related goods or services carrying similar marks. A character trademark, those with words and phrases without design elements, can be similar if they sound alike when spoken, even if spelled differently. Also if the marks appear similar in design, or suggest a similar meaning, the Trademark Office can reject your mark.
Company Names
A company name is a trade name, and trademark law makes a distinction between trade names and trademarks. Whether a trade name can also be considered a trademark depends on how the name is used. If a company name is used on packaging or the goods themselves in such a way that the name stands out to create a "separate and independent" impression in consumers as a brand, then it qualifies as a trademark.
Ornamentation Doesn't Qualify
A proposed mark that is merely decorative without identifying and distinguishing an applicant's goods is not a trademark. Common phrases or symbols such as "Have a Nice Day" or the ubiquitous smiley face would be seen as an ornamental feature on goods and therefore not eligible as a trademark. Trademark applications for slogans or phrases emblazoned on T-shirts, jewelry and other goods that come across to purchasers as only conveying a message rather than identifying a source of the goods will also be rejected.
Titles of Creative Works
The title of a single creative work, such as a novel or a song, cannot be registered as a trademark, even if the work is produced in several forms, such as electronic and printed versions, or on CDs and as downloads. A serialized creative work issued in chapters or sections would also be a single work. A theatrical performance may have a long run, but its content doesn't change and so is still a single work. If the title, however, is used to identify a series of works, or is a work in which the the content changes in each issue or performance, than it can be trademarked. Publications such as magazines, guidebooks and newsletters can have trademarked names.
Descriptive and Generic Terms
Terms that are merely descriptive in a generic or laudatory sense of a class of products or services cannot be trademarked, such as "America's Best Beer." The Trademark Office does not accept descriptive terms as trademarks to avoid inhibiting competition in the sale of a class of goods, and to protect the public's freedom to use the language in the trademark application and avoid the threat of "harassing infringement suits" from the applicant who claims the mark.
