What to Do If You Receive a Trademark Refusal from the USPTO

What to Do If You Receive a Trademark Refusal from the USPTO

Many trademarks are not approved by the U.S. Patent and Trademark Office (USPTO) the first time around...

Many trademarks are not approved by the U.S. Patent and Trademark Office (USPTO) the first time around. The good news for trademark registration applicants is that rejections can be reversed.

Common Reason for Trademark Rejection

Trademark applications can be rejected for many different reasons. While some are merely technical, others can go to the substance of your mark and/or how you plan to use it. Below are some of the most common substantive grounds:

Likelihood of Confusion

As explained by the USPTO, its trademark examining attorneys conduct a search for conflicting marks as part of the official examination of an application. In evaluating an application, the examining attorney conducts a search of USPTO records to see if there is a conflict between the applied-for mark and a mark that is either registered or pending in the USPTO. The examining attorney will consider the following key factors: the similarity of the marks; and the commercial relationship between the goods and services identified by the marks. For a conflict to exist, the marks and the goods/services don’t have to be exactly the same; rather, it is enough that the marks are similar and the goods and/or services related such that consumers would mistakenly believe they come from the same source.

Even if two marks are found to be confusingly similar, a likelihood of confusion will exist only if the goods and/or services upon which or in connection with the marks are used are, in fact, related. As explained by the USPTO, the goods and/or services do not have to be identical to be deemed related. It is sufficient that they are related in such a manner that consumers are likely to assume (mistakenly) that they come from a common source.

If a conflict exists between the applicant's mark and a registered mark, the examining attorney will refuse registration of the applicant's mark on the ground of likelihood of confusion. If a conflict exists between the applicant's mark and a mark in an earlier-filed pending application, the examining attorney will notify the applicant of the potential conflict. The applicant's mark will be refused on the ground of likelihood of confusion only if the earlier-filed application becomes registered.  

Merely Descriptive and Deceptively Misdescriptive

A trademark examining attorney will refuse registration of a mark as merely descriptive if it immediately describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services.  For example, the mark “SWEET” would be merely descriptive for candy, and the mark “JERSEY’S BEST SANDWICHES would be merely descriptive for sandwiches. 

Similarly, a trademark examining attorney will reject a mark as deceptively misdescriptive if the mark misdescribes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services; and the misrepresentation conveyed by the mark is plausible. For instance, the mark “WWII would be deceptively misdescriptive of history books and entertainment services not pertaining to the events of World War II.

Primarily Geographically Descriptive and Primarily Geographically Deceptively Misdescriptive

An examining attorney will refuse to register a mark as primarily geographically descriptive if: the primary significance of the mark is a generally known geographic location; purchasers would be likely to think that the goods or services originate in the geographic place identified in the mark, i.e., purchasers would make a goods/place or services/place association; and the mark identifies the geographic origin of the goods or services. For example, the mark “BOSTON BURGER RESTAURANT” would be primarily geographically descriptive of a burger restaurant that is located in Boston, Massachusetts

A mark will be refused as primarily geographically deceptively misdescriptive if: the primary significance of the mark is a generally known geographic location; purchasers would be likely to think that the goods or services originate in the geographic place identified in the mark, i.e., purchasers would make a goods/place or services/place association; the goods or services do not originate in the place identified in the mark; and the misrepresentation would be a material factor in a significant portion of the relevant consumers’ decision to buy the goods or use the services. For example, the mark “TRUE MEXICAN” would be primarily geographically deceptively misdescriptive for tequila that does not come from Mexico.

Ornamentation

In general, the examining attorney will refuse registration if the applied-for mark is merely a decorative feature or part of the "dress" of the goods. Such matter is merely ornamentation and does not serve the trademark function of identifying and distinguishing the applicant's goods from those of others. Clothing differs slightly in that consumers may recognize small designs or discrete wording as trademarks, rather than as merely ornamental features, when located, for example, on the pocket or breast area of a shirt. Consumers may not, however, perceive larger designs or slogans as trademarks when such matter is prominently displayed across the front of a t-shirt.

Tips to Avoid a Trademark Refusal

When brainstorming names and logos for your business or product, it is important to consider whether they are too generic or merely descriptive. Applicants should also avoid words or phrases that provide only informational matter, and, thus, are unlikely to become a source identifier that will distinguish your business. Careful thought should also be given when identifying goods and services. Applicants must not only comply with USPTO trademark standards, but should also seek to avoid any overlap with the goods and services of any similar registered trademarks.

Responding to an Office Action

If your trademark application is rejected, it is imperative to work with an experienced intellectual property attorney when preparing your response. While the exact response will vary based on the reason for the rejection, it is always important to support your arguments with both statutory trademark law and case law showing how the law was applied in similar circumstances. The ability to demonstrate the successful registration of similar marks can also bolster the likelihood of defeating an initial rejection.

If you have questions, please contact us

If you have any questions or if you would like to discuss the matter further, please contact me, Libby Varghese, or the Scarinci Hollenbeck attorney with whom you work, at 201-896-4100.


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AboutLibby Babu Varghese

Libby B. Varghese is a seasoned Registered Patent Attorney with years of experience handling matters related to Trademark Law, Copyright Law, and Corporate Intellectual Property Due Diligence.Full Biography

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What to Do If You Receive a Trademark Refusal from the USPTO

What to Do If You Receive a Trademark Refusal from the USPTO
Author: Libby Babu Varghese

Many trademarks are not approved by the U.S. Patent and Trademark Office (USPTO) the first time around. The good news for trademark registration applicants is that rejections can be reversed.

Common Reason for Trademark Rejection

Trademark applications can be rejected for many different reasons. While some are merely technical, others can go to the substance of your mark and/or how you plan to use it. Below are some of the most common substantive grounds:

Likelihood of Confusion

As explained by the USPTO, its trademark examining attorneys conduct a search for conflicting marks as part of the official examination of an application. In evaluating an application, the examining attorney conducts a search of USPTO records to see if there is a conflict between the applied-for mark and a mark that is either registered or pending in the USPTO. The examining attorney will consider the following key factors: the similarity of the marks; and the commercial relationship between the goods and services identified by the marks. For a conflict to exist, the marks and the goods/services don’t have to be exactly the same; rather, it is enough that the marks are similar and the goods and/or services related such that consumers would mistakenly believe they come from the same source.

Even if two marks are found to be confusingly similar, a likelihood of confusion will exist only if the goods and/or services upon which or in connection with the marks are used are, in fact, related. As explained by the USPTO, the goods and/or services do not have to be identical to be deemed related. It is sufficient that they are related in such a manner that consumers are likely to assume (mistakenly) that they come from a common source.

If a conflict exists between the applicant's mark and a registered mark, the examining attorney will refuse registration of the applicant's mark on the ground of likelihood of confusion. If a conflict exists between the applicant's mark and a mark in an earlier-filed pending application, the examining attorney will notify the applicant of the potential conflict. The applicant's mark will be refused on the ground of likelihood of confusion only if the earlier-filed application becomes registered.  

Merely Descriptive and Deceptively Misdescriptive

A trademark examining attorney will refuse registration of a mark as merely descriptive if it immediately describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services.  For example, the mark “SWEET” would be merely descriptive for candy, and the mark “JERSEY’S BEST SANDWICHES would be merely descriptive for sandwiches. 

Similarly, a trademark examining attorney will reject a mark as deceptively misdescriptive if the mark misdescribes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services; and the misrepresentation conveyed by the mark is plausible. For instance, the mark “WWII would be deceptively misdescriptive of history books and entertainment services not pertaining to the events of World War II.

Primarily Geographically Descriptive and Primarily Geographically Deceptively Misdescriptive

An examining attorney will refuse to register a mark as primarily geographically descriptive if: the primary significance of the mark is a generally known geographic location; purchasers would be likely to think that the goods or services originate in the geographic place identified in the mark, i.e., purchasers would make a goods/place or services/place association; and the mark identifies the geographic origin of the goods or services. For example, the mark “BOSTON BURGER RESTAURANT” would be primarily geographically descriptive of a burger restaurant that is located in Boston, Massachusetts

A mark will be refused as primarily geographically deceptively misdescriptive if: the primary significance of the mark is a generally known geographic location; purchasers would be likely to think that the goods or services originate in the geographic place identified in the mark, i.e., purchasers would make a goods/place or services/place association; the goods or services do not originate in the place identified in the mark; and the misrepresentation would be a material factor in a significant portion of the relevant consumers’ decision to buy the goods or use the services. For example, the mark “TRUE MEXICAN” would be primarily geographically deceptively misdescriptive for tequila that does not come from Mexico.

Ornamentation

In general, the examining attorney will refuse registration if the applied-for mark is merely a decorative feature or part of the "dress" of the goods. Such matter is merely ornamentation and does not serve the trademark function of identifying and distinguishing the applicant's goods from those of others. Clothing differs slightly in that consumers may recognize small designs or discrete wording as trademarks, rather than as merely ornamental features, when located, for example, on the pocket or breast area of a shirt. Consumers may not, however, perceive larger designs or slogans as trademarks when such matter is prominently displayed across the front of a t-shirt.

Tips to Avoid a Trademark Refusal

When brainstorming names and logos for your business or product, it is important to consider whether they are too generic or merely descriptive. Applicants should also avoid words or phrases that provide only informational matter, and, thus, are unlikely to become a source identifier that will distinguish your business. Careful thought should also be given when identifying goods and services. Applicants must not only comply with USPTO trademark standards, but should also seek to avoid any overlap with the goods and services of any similar registered trademarks.

Responding to an Office Action

If your trademark application is rejected, it is imperative to work with an experienced intellectual property attorney when preparing your response. While the exact response will vary based on the reason for the rejection, it is always important to support your arguments with both statutory trademark law and case law showing how the law was applied in similar circumstances. The ability to demonstrate the successful registration of similar marks can also bolster the likelihood of defeating an initial rejection.

If you have questions, please contact us

If you have any questions or if you would like to discuss the matter further, please contact me, Libby Varghese, or the Scarinci Hollenbeck attorney with whom you work, at 201-896-4100.