OPENAI OPCO, LLC (“OpenAI”) is facing an uphill battle in its attempt to register the name of its flagship product, ChatGPT, with the United States Patent and Trademark Office (“USPTO”).
OpenAI filed a trademark application for the CHATGPT mark in December 2022. However, the USPTO has issued a final office action refusing registration of the CHATGPT mark. The Examiner maintained the original finding that the term CHATGPT is descriptive of the associated goods and services.
OpenAI originally filed its application for GPT on December 27, 2022. On May 25, 2023, the USPTO Examiner reviewing the mark issued an initial refusal, finding the mark to be descriptive. OpenAI submitted a lengthy response to the Examiner’s initial refusal. The response included a perfunctory paragraph “arguing” that the CHATGPT mark is inherently descriptive. However, the bulk of OpenAI’s response was spent arguing that CHATGPT has acquired distinctiveness since its release on November 30, 2022. While the USPTO usually requires at least five years of use for a mark to have acquired distinctiveness, OpenAI argued that due to CHATGPT’s millions of users, its expansive media coverage, and the release of numerous copycat applications the CHATGPT mark has acquired distinctiveness despite its short period of use.
On February 9, 2024, the Examiner issued a final refusal for the application. Unsurprisingly unpersuaded by OpenAI’s claim that the CHATGPT mark is inherently distinctive. The Examiner restated the position that “GPT” is a widely used acronym for "generative pre-trained transformers," which are neural network models that "give applications the ability to create human-like text and content (images, music, and more), and answer questions in a conversational manner." OpenAI’s goods and services show that the mark is being used in connection with software products using artificial intelligence, machine learning, and natural language processing and generation. Accordingly, consumers encountering the mark CHATGPT will immediately understand this to communicate a feature of OpenAI’s products. Thus, the term CHATGPT merely describes a feature, function, or characteristic of OpenAI’s goods and services.
The Examiner did not consider OpenAI’s argument that CHATGPT has acquired distinctiveness, as it was argued in the alternative. Thus, if OpenAI is willing to accept that the mark is descriptive, it will need to submit a response to the final refusal requesting to amend the application to Section 2(f) application and then resubmit evidence supporting its contention that the relevant public understands the primary significance of the CHATGPT mark as identifying the source of OpenAI’s product or service rather than identifying the product or service itself.
One assumes that OpenAI will issue a response to the final refusal and/or appeal the decision to the Trademark Trial and Appeal Board. Particularly given the strength of its 2(f) acquired distinctiveness claim.