What Not to Register

Besides not being able to register descriptive words, generic terms, or certain geographic terms in a trademark, there are a few other restrictions on trademark registration.

Prohibited trademarks include the following:

• Disparaging, scandalous or immoral material;

• Coats of arms, flags or other indications of government (although elements of flags used as art of a design are acceptable);

• The name, portrait or signature of a living person (without consent) or a US President;

• A name that is primarily a surname; or

• The Olympic rings, or the words "Olympic," "Olympiad," "Citius Altius Fortius," "Pan American," "Paralympic," "Paralympiad," "America Espirito Sport Fraternite," or any combination of these words. (There is an exception for trademarks that were first used before September 21, 1950 and for trademarks used in Washington State, home of the Olympic mountain range.)

We recently represented a new food truck called Morfa Empanadas. The company’s first couple of proposed names were not available or not registrable for a variety of reasons, and I sent the owners back to the drawing board.

As usual, I told them to find something fairly arbitrary that had meaning to them. They thought about the Argentinian origins of empanadas and decided on MORFA, which is Argentinian slang for “to eat.” We were shocked when we received a refusal to register based on the fact that 12 people in the US have the surname “MORFA.” We were able to overcome this objection by providing articles on traditional Argentinian culture/language to show the word is not primarily a surname (also because 12 people out of the whole US population is not significant).