In the U.S., registration of trademarks is handled by the U.S. Patent and Trademark Office (“USPTO”). The process officially begins with the preparation and filing of an application for registration. In addition, there are various fees that must be paid. In this article, the trusted Trademark Lawyers at Revision Legal offer a few reasons why your trademark registration application might be rejected or denied (aside from the failure to pay the various fees or the filing of an incomplete application).

Not really a trademark

One reason for rejection might be that your proposed trademark is not really a trademark. That is, it does not function as a trademark. A trademark is a trademark only if it identifies the commercial source of a product or service. If the mark is just some random phrase or design, it will not be deemed a trademark. For example, this is common ground for rejection when people try to trademark a phrase on a coffee mug or t-shirt. The phrase or mark does not operate to identify a product or service or the source of that product or service. It is just a phrase or design on a mug or t-shirt.

Too generic or descriptive

Another reason for rejection might be that your proposed trademark is too generic or descriptive. To function as a trademark, the word, logo, or phrase must be distinctive. This allows the consumer to “make the mental connection” between the trademark and the product or service. Otherwise, the proposed trademark is just describing the product/service, or is just the generic name for an industry. For example, FRIENDLY DAIRY FARMS is not a good trademark. It is just a description. Of course, over time, a descriptive trademark CAN become distinctive in the minds of consumers. This is called “acquired distinctiveness.” In those circumstances, to avoid rejection, it must be proven to the USPTO that a proposed trademark has acquired distinctiveness.

Too similar to an existing trademark

One legal requirement for registration is uniqueness. That is, registration will be denied if your proposed trademark is the same as — or is confusingly similar to an existing trademark in your market segment. The issue is “consumer confusion.” If the proposed trademark is similar enough to an existing established trademark, consumers will confuse the mark. The older mark will be diminished, and the newer mark will not succeed as a trademark.

Other legal requirements are not met

Another reason for rejection might be that other legal requirements are not met. For example, at the USPTO, trademarks can only be registered if they are used in interstate commerce. If the trademark is only used within a specific state, then it cannot be registered. There can also be a “proof issue.” That is, the trademark might be used in interstate commerce, but the applicant failed to provide sufficient proof of that fact. This is known as invalid or insufficient evidence of use.

Violates various prohibitions

Trademark laws prohibit registration of certain types of trademarks or trademarks with certain components (unless there is permission or proper proof). For example, a trademark claiming to be related to a geographic area — such as Idaho — cannot be registered unless the applicant can prove it is from Idaho and/or authorized to use the name in the trademark. Example: Idaho Potatoes. A similar example involves the use of a person’s likeness or name. Permission is needed and must be included in the application. Other prohibitions include a ban on using national and state flags, disparaging or offensive words or symbols, and more.

Contact the Trademark Attorneys at Revision Legal

For more information, contact the experienced Trademark Lawyers at Revision Legal. You can contact us through the form on this page or call (855) 473-8474.

Likelihood of Confusion: The Most Common Ground for Refusal

The most frequently cited ground for trademark refusal is likelihood of confusion with an existing registered mark, under Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d). The USPTO’s likelihood-of-confusion analysis is based on the factors articulated in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973). The most important DuPont factors are:

• The similarity of the marks in appearance, sound, meaning, and overall commercial impression
• The relatedness of the goods and services — marks that would be refused for identical goods may be approved for unrelated goods in different markets
• The channels of trade — are the goods sold through the same retailers to the same consumers?
• The sophistication of consumers — sophisticated B2B buyers are less likely to be confused than general consumers
• Evidence of actual confusion — the strongest evidence of likelihood of confusion is evidence that confusion has already occurred

A common mistake is assuming that adding a word or changing a design element is sufficient to avoid a likelihood-of-confusion refusal. The USPTO evaluates the marks as a whole and focuses on the dominant elements. A mark that is “confusingly similar” to an existing mark in its dominant element may be refused even if there are differences in minor elements.

Marks That Cannot Be Registered as a Matter of Law

Beyond descriptiveness and confusion, the Lanham Act contains several absolute bars to registration — marks that the USPTO must refuse regardless of distinctiveness or acquired secondary meaning. These include:

• Immoral or scandalous marks — 15 U.S.C. § 1052(a) bars registration of marks that are immoral, deceptive, or scandalous; however, the Supreme Court’s decisions in Matal v. Tam, 582 U.S. 218 (2017), and Iancu v. Brunetti, 139 S. Ct. 2294 (2019), significantly narrowed the scope of these bars
• Geographic marks — primarily geographically descriptive marks are generally refused unless they have acquired distinctiveness; primarily geographically deceptively misdescriptive marks are absolutely barred from registration
• Names of living persons — registration is barred for a mark that is primarily merely a name of a living individual without their written consent
• Official insignia — marks that simulate flags, coats of arms, or other insignia of the US, state governments, or foreign nations are barred from registration

The Office Action Response Process

When the USPTO refuses an application, it issues an Office Action explaining the grounds for refusal. The applicant has three months to respond (extendable to six months for an additional fee). The response can be a legal argument that the ground for refusal does not apply, an amendment to the application to address the refusal, or evidence overcoming the refusal (such as evidence of acquired distinctiveness).

If the examining attorney maintains the refusal after the response, a final Office Action is issued. The applicant can then appeal to the Trademark Trial and Appeal Board (TTAB), and ultimately to the Court of Appeals for the Federal Circuit or the applicable federal district court. Having experienced trademark counsel guide you through the Office Action response process significantly improves the likelihood of successful registration.

Contact the Attorneys at Revision Legal

If you have questions or need legal advice, contact the experienced attorneys at Revision Legal. Our team handles trademark registration matters for businesses and individuals nationwide. Call us at (855) 473-8474 or use the contact form on our website.