Explanation of IPWatch Indicators

“Term is a Dictionary Definition” – Dictionary Definition: A mark is a recognized word.

“Term Contains a Dictionary Definition” – Dictionary Definition: A mark contains a term which is a recognized word.

“Term is a Geographic Name” – Geographic Name: A mark which has geographic meaning anywhere in the world. It is important to identify if a mark has geographic meaning because this could affect the registrability of the mark. The United States Patent and Trademark Office will refuse to register a mark which is primarily geographically descriptive or primarily geographically deceptively misdescriptive*.

In determining whether a mark is primarily geographically descriptive or primarily geographically deceptively misdescriptive, the United States Patent and Trademark Office will be looking for terms which are commonly known to the average American consumer. Accordingly, because IPWatch searches identify geographic names, no matter how obscure, a mark flagged as a “Geographic Name” does not automatically mean the mark will be refused registration. This indicator merely serves as a guide that there exists a risk that the mark could be refused registration on the basis of being primarily geographically descriptive or primarily geographically deceptively misdescriptive.

*Please see Glossary for explanation of “geographically deceptively misdescriptive.”

“Term Contains a Geographic Name” – Geographic Name: A mark which has geographic meaning anywhere in the world. It is important to identify if a mark contains a term with geographic meaning because this could affect the registrability of the mark. The United States Patent and Trademark Office will refuse to register a mark which is primarily geographically descriptive or primarily geographically deceptively misdescriptive*, or you may be required to disclaim the geographic term. In determining whether a term is primarily geographically descriptive or primarily geographically deceptively misdescriptive, the United States Patent and Trademark Office will be looking for terms which are commonly known to the average American consumer. Accordingly, because IPWatch searches identify geographic names, no matter how obscure, a mark flagged as a “Geographic Name” does not automatically mean the mark will be refused registration. This indicator merely serves as a guide that there exists a risk that the mark could be refused registration on the basis of being primarily geographically descriptive or primarily geographically deceptively misdescriptive.

*Please see Glossary for explanation of “geographically deceptively misdescriptive.”

“Term is a Surname” – Surname: The mark appears as a surname 100 times or more in the most recently available U.S. Census records. It is important to identify whether a mark as a whole is a surname because marks which are primarily merely a surname will be refused registration by the United States Patent and Trademark Office. In such situations, a mark which is primarily merely a surname will only be registerable upon proving that the mark has acquired secondary meaning.

“Term Contains a Surname” – Surname: The term appears as a surname 100 times or more in the most recently available U.S. Census records. If any term incorporated with the mark appeared 100 times or more in the most recently available U.S. Census records, the “Yes” box will be selected. It is important to identify whether a mark contains a surname because this could affect mark’s registrability. Marks which are primarily merely a surname will be refused registration by the United States Patent and Trademark Office. Furthermore, marks containing a surname, coupled with additional terms which are merely descriptive or generic, the mark as a whole may still be found to be primarily merely a surname. For example, the mark MILLER LAW GROUP is primarily merely a surname. Even though only the term “Miller” is a surname, the terms “Law Group” are generic terms, and terms often associated with surnames.

“Term is a Word of Disrepute” – Disrepute: The mark has a whole is an obscene, vulgar, and/or racially disparaging term. It is important to identify whether a mark is a term of disrepute as such marks are not capable of registration with the United States Patent and Trademark Office.

“Term Contains a Word of Disrepute” – Disrepute: The mark contains a term which is obscene, vulgar, and/or racially disparaging. If it important to identify whether a mark contains a term of disrepute as such marks may be refused registration by the United States Patent and Trademark Office.

“Deceptive” – A mark or term that consumers are likely to believe identifies a quality or characteristic of the goods and/or services when, in fact, the term does not identify the goods and/or services. For example, the mark LEATHER WALLET would be deceptive if the mark is applied to wallets not made of leather. If the deception is a material factor in consumers’ decision to purchase, the mark cannot be registered with the USPTO. If the deception is not a material factor in consumers’ decision to purchase, the mark can be registered with the USPTO only upon showing the mark has secondary meaning.

“Descriptive” – Mark merely describes quality or characteristic of a mark. Descriptive marks can be registered with the USPTO only upon showing the mark has secondary meaning.

“Design Mark” – Mark consists of some type of design element.

“Dilution” – Third party use of marks and/or terms which weaken the distinctiveness and/or reputation of your mark. It is not necessary to prove there is a likelihood of confusion; however protection against dilution is available only to “famous” marks.

“Generic” – A mark or term which describes a category or class of goods and/or services. Generic marks are never capable of registration.

“Geographically Deceptively Misdescriptive” – A mark which is a known geographic term, consumers are likely to believe the goods/services come from that geographic place, and the goods/services do not come from that geographic place. For example, the mark CALIFORNIA ORANGES would likely be found to be geographically deceptively misdescriptive if the mark was applied to oranges coming from Florida because “California” is a known geographic place, oranges are known to come from that place, and consumers, therefore, are likely to believe oranges bearing the mark CALIFORNIA ORANGES originated from California.

“Geographically Descriptive” – A mark which is a known geographic terms, consumers are likely to believe the goods/services come from that place, and the goods/services do in fact originate from that place. For example, the mark KANSAS CITY STEAKS would likely be found to be geographically descriptive because Kansas City is a known geographic place and is known for steaks.

“Infringement” – A third party is using your identical mark or a mark that is confusingly similar to yours and such use is likely to create consumer confusion.

“Secondary Meaning” – A mark has come to be recognized, in the minds of consumers, as an indication of the source of the goods and/or services rather than merely describing the goods and/or services. Also called “acquired distinctiveness.”

“Service Mark” – A word, phrase, symbol, logo, or color which serves as an indication of source of particular services.

“Suggestive” – A mark which suggests a particular quality of the goods/services without directly describing the goods/services. For example, the mark COPPERTONE for tanning oil is suggestive.

“Trademark” – A word, phrase, symbol, color, or logo which serves as an indication of source of particular goods.

“USPTO” – United States Patent and Trademark Office

“Word of Disrepute” – A term which is obscene, scandalous, vulgar, or racially disparaging. A term of disrepute cannot be registered.