A few months ago, the New York Times sued OpenAI for using their copyrighted materials in ChatGPT’s language models, which we wrote about in this article.

Now, their application for registration of the main ChatGPT trademark received a final rejection from the US Patent and Trademark Office (“USPTO”). The USPTO Examining Attorney deemed their trademark "merely descriptive" under Trademark Act Section 2(e)1. This designation means that the trademark merely describes “a feature, function, or characteristic" of the goods or services offered.

As we discussed in this article, in order to qualify as a trademark, a brand name needs to be distinctive enough to serve as a source identifier. In other words, a consumer would be able to look at the branding and figure out which company is offering the goods or services. There is a spectrum of trademark strengths, which guide this analysis. If the trademark is too weak, the application might suffer a final rejection.

Merely descriptive trademarks fall on the weaker end of this scale. The trouble with descriptive trademarks is that a consumer might see the brand and think it is a description of the product, and not a designation of which company is making it. Two of the big reasons for this prohibition are, first, to protect the consumer from potentially getting confused about which product comes from what company, and, second, to protect brands from their competition monopolizing a common word or phrase used in the industry.

Here, the USPTO position is that because ChatGPT is both a chat and a "Generative Pretrained Transformer" (or GPT), it falls squarely into the merely descriptive category.

OpenAI has one more chance to respond to the rejection with a Request for Reconsideration. One way around this type of rejection is to argue that even though the trademark is not inherently distinctive, it has, through use, acquired distinctiveness under Trademark Act Section 2(f). The attorneys for OpenAI have taken this approach, despite the challenges of a successful 2(f) claim.

Interestingly, what we did not see, is a good old-fashioned argument against the conclusion that the trademark as a whole is not merely descriptive, even if its parts may be. Regardless, if this application fails, their similar logo application did not get the same rejection, so they will have something to work with.