When someone applies for a federal trademark registration with the United States Patent and Trademark Office (USPTO), it is possible for the trademark registration application to be refused. While this is often disappointing, it is possible to appeal a trademark registration refusal. An experienced trademark registration lawyer will be able to help you understand your trademark registration grounds for refusal and can help you try to overcome the refusal, either by providing evidence of secondary meaning associated with your trademark, or through the appeals process.
Most Common Grounds for Trademark Registration Refusal
There are several possible grounds for trademark registration refusal, which include:
- Likelihood of confusion with an existing registered trademark.
- The trademark is merely descriptive.
- The trademark is deceptively misdescriptive.
- The trademark is primarily merely a surname.
Likelihood of Confusion With an Existing Registered Trademark
One of the most common grounds for a trademark registration refusal is likelihood of confusion with an existing registered trademark. When a trademark application is filed with the USPTO, a trademark examiner reviews the applicant’s mark and intended field of use for the mark (i.e., the particular category of goods or services that the mark will be used in) and compares it to the realm of existing registered trademarks in similar and related fields of use. If the trademark examiner finds that the applicant’s trademark is confusingly similar to an existing registered trademark that is used with a similar or related type of good or service, the examiner will issue a refusal.
The confusion between the two marks could stem from similar-sounding trademarks, trademarks that are similar in appearance, or trademarks that are too similar in their meaning. Misspellings of an existing registered mark, phonetic equivalents of an existing registered mark, unique stylization of an existing registered mark, or foreign word versions of an existing registered mark are all scenarios that are often considered confusingly similar and pose a likelihood of confusion.
Another way that two marks can be confusingly similar is if they have a similar overall commercial impression in the mind of consumers. If the consumer were to look at one of the marks, and then look at the conflicting second mark (i.e., the applicant’s mark), and the consumer would be confused because the overall impressions of the two marks are substantially similar, then the registration on the trademark on the second conflicting mark would likely be refused.
Two trademarks are only considered to run the risk of a likelihood of confusion in the mind of the consumer if the to trademarks are used in a similar or related category of goods or services. For instance, the two trademark DOMINO’S for a pizza eatery and pizza delivery service and the trademark DOMINO for granulated sugar do not run the risk of likelihood of confusion because the two categories of goods or services where each of these marks are used, respectively, are very different from one another.
In addition to being compared to existing registered trademarks, an applicant’s trademark will also be compared to other earlier-filed pending trademark applications. While refusals are only made against existing registered trademarks, the trademark examiner will notify the applicant of the existence of the earlier-filed pending trademark application that is confusingly similar to the applicant’s current trademark application.
The Trademark is Merely Descriptive
A trademark that is merely descriptive of the product or good that it is associated with will usually be refused trademark registration. More precisely, even if the descriptive trademark is directed towards a specific quality, characteristic, ingredient, feature, function, or purpose of the good or service associated with the mark, if the mark is only directed to describing anyone of these, it will not be enough to be distinctive in the minds of consumers.
The Trademark is Deceptively Mis-descriptive
If a trademark is used to deceptively misdescribe an ingredient, feature, characteristic, or some other aspect of a good or service that could reasonably be perceived by a consumer to be true (although it is not an accurate description), the trademark registration will be refused. A trademark should not be used to trick or deceive consumers into thinking that a good or service is something that it is not.
The Trademark is Primarily Merely a Surname
From time to time a trademark applicant will try to obtain trademark registration on a trademark that is also a surname (i.e., a person’s last name). Examples could include “McMillan’s” for a craft beer, “Carol Readers” for book publishing services, or “Stevens” for a fast food restaurant. However if the purchasing public will consider the trademark to only be reference to a surname, then the trademark examiner will likely refuse registration.
In situations where two surnames are combined, the USPTO might be persuaded to permit registration of the mark. Similarly, if the surname is fairly unique, the USPTO may allow the surname to be registered as a trademark.
For more common surnames, secondary meaning of the surname as a trademark is often required to overcome a refusal of registration. If the trademark applicant can show that the surname trademark has developed secondary meaning by its association with the product or service it is used with, it could be possible to obtain a trademark registration after all. Many surnames have successfully been trademarked, including:
- DEL MONTE
- JOHNSON & JOHNSON
There are other substantive bases for refusal of a trademark registration but the above identified grounds for refusal are the most commonly encountered by trademark applicants.
When Your Trademark Application has Been Refused
Based on the particular details of your situation, it may be possible to provide either evidence of secondary meaning for your trademark to show that your mark is distinct in the minds of consumers, or you could appeal the refusal. An experienced trademark attorney will be able to explain your trademark registration refusal to you and can advise you on how best to proceed.
Contact the trusted New York trademark attorneys at Revision Legal today to discuss your particular trademark concerns. We can be reached by either using the form on this page or by calling us at 855-473-8474.