Filing for a trademark with the United States Patent and Trademark Office (USPTO) can be a tricky process. Even experienced filers run into issues getting their trademarks approved on the first try.
The United States Patent and Trademark Office (USPTO) receives around 400,000 trademark filings every year. However, only about half of these filings successfully register as trademarks. The most common reasons trademark applications get rejected are:
The most common reason for rejection is likelihood of confusion with an existing registered mark. When reviewing a trademark application, the USPTO trademark examining attorney compares the proposed mark to existing registered and pending marks. If the proposed mark is too similar to an existing mark, such that consumers would be confused between the two, the USPTO will reject the application. Factors considered in assessing likelihood of confusion include:
Avoiding likelihood of confusion rejections requires conducting a comprehensive trademark search before filing. Search both registered and unregistered marks, including domain names, to uncover potential conflicts. Also consider modifying the proposed mark to increase differences from existing marks.
The USPTO will reject trademark applications if the mark is “merely descriptive” of the associated goods/services. For example, “Cold Beer” for beer would likely be rejected as merely descriptive. Marks need to be distinctive, not just describe the goods/services. To overcome a merely descriptive refusal, the applicant can:
Carefully consider if the proposed mark describes product characteristics to avoid merely descriptive rejections. Coined terms and arbitrary marks are less likely to be descriptive.
The USPTO will reject deceptively misdescriptive marks that misdescribe a material quality of the goods/services. For example, “Silk” for non-silk scarves. The mark must misrepresent a material factor that affects consumer purchasing decisions.
Generic terms that refer to a category of goods/services cannot be protected as trademarks. For example, “Car” for automobiles would be considered generic. Evaluate if the proposed mark is commonly used as the name of the product itself rather than a brand.
Generic rejections are difficult to overcome since generic terms are incapable of functioning as trademarks. The applicant would need to argue the term is not generic in relation to the specific goods/services, which requires evidence of consumer perception.
Like descriptive rejections, the applicant can argue acquired distinctiveness or disclaim misdescriptive wording. Also, clarify that the misdescriptive wording refers to different goods/services than consumers would likely assume.
Sometimes trademark applications get rejected for technical issues with the application rather than the mark itself. Common application errors include:
Addressing application errors and deficiencies is usually straightforward by providing the requested clarifications, corrections, and replacement specimens. Carefully review applications before submission.
Every trademark application requires you to submit specimen evidence showing real-world use of your mark. This usually involves providing tags, labels, packaging or marketing materials showing the applied-for mark being used in commerce. Failure to meet the specimen requirements is a common reason for USPTO rejection.
Specimens may get rejected if they don’t clearly show use of the exact mark. They could also get denied for being digitally altered or not fully revealing the nature of the goods/services. Make sure your specimens are clear, unedited photos or scans showing real proof of trademark use.
Every trademark application must specify the class(es) of goods or services connected to the mark. The USPTO uses a standardized international classification system with 45 classes. When the class(es) listed don’t accurately reflect what your trademark is being used for, refusal is likely.
For example, if you select Class 25 for apparel when your mark is really meant for software in Class 9, it will probably get kicked back. Make sure you only designate relevant and accurate classes on your application.
Within your specified class(es), you must also provide a clear, specific identification of your associated goods/services. Descriptions that are too vague or ambiguous often lead to rejection. For example, “clothing” would be considered too broad compared to “t-shirts, hats, jackets.” Take time to articulate your goods/services as detailed and precise as possible.
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