Can Universal Symbols Function as Trademarks?
A universal symbol is an image or design that conveys information and has a widely recognized meaning when displayed with its relevant content. Some examples include the recycling symbol, the biohazard symbol, the prohibition symbol, and the peace symbol. A universal symbol may fail to function as a trademark because it only communicates information, functions as ornamentation, or merely describes a function, feature, quality or purpose of the goods or services. In addition, if a universal symbol creates a false impression regarding the goods or services, then the mark may be refused for being deceptive or deceptively misdescriptive. Therefore, an Examining Attorney may refuse a trademark containing a universal symbol for one of the aforementioned reasons. See Chapter 1200 of the Trademark Manual of Examining Procedure for the grounds on which a trademark application may be refused.
However, there are times when a universal symbol will function as a trademark and be allowed to register. For example, a universal symbol in a mark should be considered capable of registration if it is highly stylized, if it incorporates elements that are not usually in the symbol or if it is intertwined with other elements of the mark and as a result there is a distinctive commercial impression. Generally, no disclaimer will be required of a highly stylized pictorial representation of descriptive matter. The reason for this is because the design element creates a distinctive commercial impression. See our webpage entitled, Trademark Disclaimers for an extended explanation of when an Examining Attorney may require an applicant to place a disclaimer statement in the application.
The critical question in determining if a mark containing a universal symbol can register is whether the mark would be perceived as a source indicator. Typically, the specimen plays a critical role in this analysis. However, if the Examining Attorney decides that the mark can only function as informational matter, then the specimen will not be considered significant. An example of this scenario is if the biohazard symbol appeared on containers for disposing of medical waste. Under this example, the biohazard symbol will only function to convey information no matter how the mark is displayed. Thus, it cannot act as a source indicator or function as a trademark. The Examining Attorney would refuse this application and support the refusal by providing evidence of the widely recognized meaning of the symbol and submit evidence to show that the symbol typically appears on similar goods. If the mark is refused on this basis, the applicant will not be given the opportunity to demonstrate acquired distinctiveness or amend to the Supplemental Register.
The "hashtag", a recently emerged symbol is receiving a lot of focus. It is a form of metadata consisting of a word prefixed with the symbol "#". Hashtags are frequently used on social-networking websites to identify a topic of interest using a keyword. The actual symbol "#" or word "hashtag" does not provide any source indicating function. When using a hashtag it commonly assists with categorizing or with searching and does not act a source indicator. The term hashtag is similar to the term ".com" because it only imparts information; the .com conveys an on-line address. Thus, the addition of the term hashtag will not allow a mark to register, if it could not register prior to the addition of the hashtag. Keep in mind that not every designation that a party places on its goods will necessarily function as a trademark, regardless of the party's intention.
If a mark using the term hashtag or uses the symbol "#" is unitary with other arbitrary or suggestive wording in the mark, there will be no descriptive or generic refusal or disclaimer required. An example would be the mark #LOVEBUG used on clothing. Relevant evidence of a symbol's significance will be examined along with its usual manner of use. In the end, the Examining Attorney will review each trademark application containing a universal symbol on a case-by-case basis before determining if it will allow or refuse the application. If you have any questions related to universal symbols or other trademark related inquiries, do not hesitate to contact our office for a courtesy consultation.