Trademark Incapability, Merely Informational, and Failure to Function Refusals: Strategies for Avoiding and Overcoming Trademark Office Actions

Description

Learn on the one hand how “The Best Beer in America” has been found so highly descriptive that it is incapable of serving as a trademark while on the other hand “The Greatest Show on Earth” has been recognized and protected from dilution as famous mark, fully capable of performing as a valid trademark.

Gone are the days when easily obtaining a Supplemental Registration for a merely descriptive mark is a routine occurrence. More and more often, the USPTO is rejecting trademark applications because the applied-for matter is considered incapable of serving as a trademark. So-called merely informational trademark refusals have been on the rise over the last four years at the USPTO.

With merely informational matter, there is no possibility of proving acquired distinctiveness for registration on the Principal Register and in the alternative, there is no possibility of registration on the Supplemental Register. Yet, these trademark incapability rulings are being made without a showing of genericness.

Among the types of subject matter that are targeted in merely informational refusals are widely used or common marketing messages. Indeed, TMEP §1202.04 directs Examining Attorneys to refuse registration when the claimed mark merely conveys general information about the goods or services, or when the claimed mark can be considered a highly laudatory claim of superiority, yet these kinds of refusals sound a lot like subject matter that used to be refused on mere descriptiveness grounds. Only now, when trademark incapability is found with this kind of subject matter, the new challenge is that the rejection cannot be overcome with a showing of acquired distinctiveness, and no amendment to the Supplemental Register is possible. Basically, the outcome is the same as genericness without the rigor and necessary evidence to support genericness.

Listen as our authoritative panel of trademark attorneys examines trademark incapability, failure to function, and merely informational trademark refusals. The panel will discuss strategies for avoiding these kinds of refusals and also will explore opportunities for responding to rejections and overcoming the refusals.