CHATGPT Describes Being Refused as a Descriptive Trademark

In the world of trademarks, where names and logos strive to gain recognition and protection, the journey can sometimes be as challenging as it is amusing. OpenAI, a pioneering force in artificial intelligence, recently embarked on such a journey with their trademark application for “CHATGPT.” However, the United States Patent and Trademark Office (USPTO) had other plans, refusing the application on the grounds that it was “merely descriptive.” This blog post delves into the twists and turns of this trademark tale, and how OpenAI valiantly fought to overcome the refusal.

The Refusal:

On May 25, 2023, the USPTO issued a non-final Office Action refusing OpenAI’s trademark application for CHATGPT (Serial No. 97733261). The examining attorney argued that the mark was merely descriptive of the goods and services offered by OpenAI. According to the Office Action, “CHAT” refers to “a synchronous exchange of remarks over a computer network,” and “GPT” is an acronym for “Generative Pre-trained Transformer,” a specific type of AI technology used by OpenAI.

In essence, the USPTO felt that CHATGPT described precisely what the software does: it enables chat interactions using GPT technology. This, the USPTO argued, made the mark not distinctive enough for trademark protection on the Principal Register​​.

OpenAI’s Response:

OpenAI, undeterred by this initial setback, mounted a comprehensive response. They argued that CHATGPT is more than just a descriptive term—it has acquired distinctiveness through extensive use, media coverage, and consumer recognition.

Acquired Distinctiveness Argument:

1. Public Launch and Massive Adoption: OpenAI highlighted that CHATGPT was launched on November 30, 2022, and quickly became a global sensation. Within five days, it garnered over a million users, and within a month, tens of millions were using the chatbot. By February 2023, it was hailed as the fastest-growing consumer software application in history​.
2. Widespread Media Coverage: The response included numerous examples of unsolicited media coverage from major outlets like The Economist, The New York Times, and NBC News. These articles not only covered the capabilities of CHATGPT but also prominently featured the mark itself, helping to solidify its place in the public consciousness​​.
3. Consumer Recognition and Use: OpenAI emphasized that CHATGPT is not just a product name but a brand recognized by millions of users. The software’s innovative features, such as answering questions, translating languages, and generating text, have made it a household name. The response included evidence of the mark’s prominent display across various platforms, including web applications, mobile apps, and API integrations​​.

Legal Precedents and Evidence:

OpenAI’s legal team supported their argument with relevant legal precedents and a wealth of evidence demonstrating acquired distinctiveness. They cited cases where marks achieved trademark protection despite initial descriptiveness refusals, emphasizing the importance of consumer recognition and media coverage in establishing distinctiveness.

Supplemental Register Consideration:

As a strategic alternative, OpenAI also considered the possibility of registering CHATGPT on the Supplemental Register. While not as prestigious as the Principal Register, the Supplemental Register still offers certain protections and can serve as a stepping stone to achieving Principal Register status later on.

Conclusion:

The battle for the CHATGPT trademark exemplifies the challenges and complexities of the trademark registration process. OpenAI’s robust response to the USPTO’s refusal highlights their commitment to protecting their brand and underscores the importance of acquired distinctiveness in overcoming descriptiveness refusals.

While the final outcome of this trademark saga remains to be seen, OpenAI’s efforts demonstrate that persistence, creativity, and a strong legal strategy can turn a seemingly straightforward refusal into an opportunity for brand reinforcement and growth. Stay tuned as we follow the next steps in the CHATGPT trademark journey—where technology, law, and a bit of humor intersect in the quest for intellectual property protection.