Section 1052 Bars to Registration
The lengthy §1052 states that no trademark which serves to distinguish goods (i.e., not generic, etc.) shall be refused registration, unless…. This means that the various subsections of §1052 list the type of marks which will not be approved for the primary registry. In summary, these are:
- Immoral, deceptive, scandalous, or disparaging marks.
- Marks which resemble the flag or other insignia of the United States, a state or municipality, or a foreign nation.
- Marks which include the name, picture, or signature of a living person without that person’s consent.
- Marks which are confusingly similar to previously registered marks or marks previously used and not abandoned. This subsection contains extensive limitations and conditions.
- Merely descriptive marks or deceptively misdescriptive marks, geographic terms, surnames, and functional terms.
The “Interpretive Notes and Decisions” following §1052 consists of hundreds of cases. A number of the cases deal with confusingly similar marks, a discussion which we will put off until Chapter 5. However, a few holdings which are interesting and relevant to our current discussion include:
- The slogan “two all beef patties special sauce lettuce cheese pickles onions on a sesame seed bun” does more than merely describe the ingredients of a product; it distinctively identifies the product’s origin. In re McDonald’s Corp., 199 U.S.P.Q. 490 (T.T.A.B.. 1978).
- “Farmcraft” as a mark for dairy and meat products is valid and able to be registered, even though “farm” and craft” are independently generic. Henry Muhs Co. v Farm Craft Foods, Inc., 37 F Supp 1013 (DC NY 1941).
- Where a boiler’s end plates are black to avoid discoloration from smoke, and the middle portion red to avoid discoloration from rust, the color scheme has a functional purpose and cannot be placed on the registry as a mark. Weil-McClain Co. v. American Radiator Co., 57 F.2d 353 (1932).
- Taking the canine used in a competitor’s symbol and displaying a similar dog in the act of defecation is disparaging and not able to be registered. The Greyhound Corp. v. Both Worlds, Inc., 6 U.S.P.Q. 2d (TTAB 1988).
- “The Memphis Mafia” does not disparage Italian-Americans and can be placed on the register. Order of the Sons of Italy in America v. The Memphis Mafia, Inc., 52 U.S.P.Q. 2d (TTAB 1999).