What is the probability of a trademark rejection or delay in a trademark application?
According to the USPTO trademark dashboard, statistics show that about 43% of trademark applications filed via TEAS receive an approval without any Office Actions. So, less than half of trademark applications filed via TEAS will receive a “first action approval” or “first action allowance.” This means that there is a greater than 50% chance that a TEAS trademark application will be denied or questioned. The refusals or information requests will come in the form of a letter called an Office Action issued by the trademark examiner known as an examining attorney. Not every Office Action will contain a refusal, but the probability of a trademark rejection is nonetheless significant.
It is also possible that your application might be suspended pending the outcome of prior-filed applications for similar marks. Technically speaking, your application has not been rejected (at least not yet). Nevertheless, your path to registration may be severely delayed and hindered by third party trademark applications that were filed before yours.
What are the chances of success in overcoming a confusion or descriptive refusal?
The USPTO does not appear to publish statistics on the number of Section 2(d) or Section 2(e) refusals that were withdrawn. So one can only speculate on the probability of prevailing over a refusal based on likelihood of confusion or mere descriptiveness. A helpful analysis done by The TTABlog shows that the rate of likelihood of confusion refusals that were affirmed by the Trademark Trial and Appeal Board (TTAB) in 2020 was an overwhelming 90.9%. In 2019, the probability of overturning a merely descriptive refusal on appeal was approximately 6% as the rate of rejections that were affirmed was almost 94%.
Keep in mind that these are appeal statistics, which means that the first argument made response to the refusal was unsuccessful. A trademark appeal to the TTAB typically involves a second or subsequent argument against the rejection. Knowing that your chances of successfully appealing a trademark application rejection is in the measly single digits has a few implications:
- Try to avoid or minimize the risk of trademark refusals in the first place. This is easier said than done, but there are a few strategies discussed below that are within your control.
- If you receive a trademark rejection, your best shot at overcoming the refusal will likely be your first argument.
Given that the chances of success at the appeal stage are so slim, your first argument may practically end up being your last argument.
How can you improve your probability of registering your trademark?
One way to improve your chances of registering a trademark is to avoid or minimize the probability of a likelihood of confusion rejection. Do your own trademark search before filing. If you see a live filing for a highly similar mark, that is probably a good sign to avoid filing for your initial mark and, instead, pivot to a new mark. Our firm charges flat fees for knockout searches.
A knockout search can be very useful in searching confusable trademark filings, but it will not cover the risk of a merely descriptive rejection. An experienced trademark attorney may be able provide some guidance on the risk of a merely descriptive refusal for your desired mark.
How can you improve your chances of winning a trademark argument?
A trademark application has both rigid and flexible parts. The mark itself – the spelling, sound, appearance, meaning – is quite rigid. There is not much you change about the mark itself once your trademark application is filed.
The goods and services, however, are flexible. While you can’t broaden the scope of your original goods or services, you can clarify, specify or delete items from your identification of goods/services. Consider how you can use this flexibility to your advantage in responding to a confusable or descriptive rejection.
If you’re dealing with a partial refusal that applies to only a subset of your goods or services, consider a Request to Divide so that your approved goods/services may proceed to allowance while you continue to fight for the rejected items.
The probability of a trademark rejection can be uncertain. There are times when you expect a particular mark to be rejected, and it gets allowed. More often that not, you may expect a mark to be registered when, in fact, it encounters repeated rejections. By focusing on what is within your control – i.e., pre-filing considerations and flexible parts of trademark application – you may be able to improve your chances of obtaining a trademark registration.
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