We’ve said it a thousand times, but there really are myriad ways in which your federal trademark application may be refused registration at the U.S. Patent and Trademark Office (USPTO). The USPTO hires an army of trademark examiners whose sole job is to review trademark applications for errors, omissions and conflicts with prior registered or pending trademarks.
One of the upsides to working with an experienced trademark attorney is that you will likely avoid most of these errors and pitfalls. But in the event you filed the application yourself (or worked with an attorney who knows nothing about trademark law), you may encounter unforeseen issues during the application review process and the Examiner may issue a non-final refusal, also known as an Office Action, against your application. Some Office Actions are non-substantive and easily resolved. Others are stubborn, and may require a bit of elbow grease and the help of a knowledgeable trademark attorney. In any case, let’s consider some of the most common reasons your trademark application may be refused registration at the USPTO, in no particular order:
1. Likelihood of Confusion – Your mark conflicts with a similar registered trademark, or a prior pending application and may create a likelihood of confusion among potential consumers if both marks are allowed registration. This is one of the most common substantive refusals that we see. If someone else has registered your identical trademark, or something very similar, for related goods or services, the USPTO will put the kibosh on your application, unless and until you’re able to present persuasive arguments why your registration should be allowed. A comprehensive trademark search, ideally one conducted by an experienced trademark attorney who knows what to look for, usually reduces the likelihood of your mark conflicting with a prior pending or registered trademark.
2. Merely Descriptive – If your mark lacks sufficient distinctiveness when used in connection with your proposed goods or services, the USPTO may refuse registration based on mere descriptiveness. Under current U.S. trademark law, a mark is considered merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services. If your mark is comprised of several words but contains one or more descriptive elements, the Examiner may permit registration of the mark with a disclaimer of the descriptive or generic term(s). In the alternative, the USPTO may allow registration of the mark only on the Supplemental Trademark Register. To avoid a descriptiveness refusal, choose a mark that is unique, arbitrary or fanciful when used in connection with your goods or services.
3. Improper Specimen – The USPTO may refuse registration of your mark if the specimen submitted to show use of your mark in commerce fails to exactly depict the mark as submitted for registration. The USPTO is very meticulous on this point. If your clothing tags, store signage or product label differs in any way from the drawing of your mark shown in the trademark application, the Examiner may refuse registration on the basis of an improper specimen. This is a non-substantive refusal that can usually be overcome by submitting a proper, matching specimen.
4. Geographic Significance – There are two bases on which the USPTO may refuse registration based on geographic indicators, (1) if your mark is geographically descriptive, or (2) if your mark is geographically deceptively misdescriptive. If your mark includes a geographic indicator (a region or location) and the goods actually originate from that region, and the purchasing public is likely to believe that the goods originated from that region, your mark may be refused registration based on geographic descriptiveness (e.g., California Wine). On the other hand, if your mark includes a geographic indicator but the goods do not originate from the region, but the public is likely to believe they do and that is a material consideration in their purchasing decision, then your mark may be deemed geographically deceptively misdescriptive. In both cases, the USPTO may refuse registration of the mark.
5. Merely Ornamental – A common basis of refusal for t-shirts, mugs, keychains and printed materials (bumper stickers, calendars, etc.) concerns marks that are merely ornamental. Based on the specimen submitted, the USPTO may find that the mark proposed for registration, as used in connection with the goods or services in the application, does not serve as a unique identifier but is rather merely ornamental or decorative. To qualify for trademark registration, a mark must serve as a source identifier for your goods or services. So if your mark is a smiley face on a t-shirt or a catchy slogan on a mug, it may not sufficiently convey a trademark, in which case the USPTO may refuse registration of the mark.
And there you have it! Our list of the Top 5 reasons your trademark application may be refused registration at the USPTO. For more information on any of the above, or to discuss how we may help guide your trademark application process, please contact us for a complimentary consultation, (800) 769-7790. We’re always happy to hear from you!
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