Trademark application rejections: Reasons why and how to respond

Why do trademark applications get rejected?

Most trademark applications are not approved on their first go-around according to USPTO trademark statistics. Only 34.4% of TEAS Plus applications and 16.3% of TEAS RF applications receive a “first action approval” (as of the date of this post). That means that Office Actions are issued against the vast majority of trademark applications. While the reasons for trademark application rejections are numerous, they generally fall under two categories:

  1. Refusal of registration (substantive Office Action); and
  2. Non-substantive issues.

Non-substantive issues are fairly straightforward and inexpensive to resolve, with the exception of questionable trademark disclaimers. Examples of non-substantive issues include requests for amendments or further information regarding the following:

  • identification of goods and services
  • background on the meaning of the mark in the industry or in a foreign language
  • description of the mark if a stylized logo (design mark) is involved

Significantly more effort and cost will be required to overcome a substantive refusal to register your trademark. Examples of substantive grounds for rejecting a trademark application include:

How to avoid or minimize trademark rejections

Before filing your trademark application, understand that certain pre-filing measures can significantly reduce the risk of substantive and non-substantive rejections. Here are some tips.

If you are brainstorming, rule out those marks that seem generic or descriptive of your products. You should also filter out words or phrases that seem to provide only informational matter, and lack the potential to become a source identifying brand that will distinguish your company.

The identification of goods and services will require careful consideration. You want to use descriptions that not only conform to USPTO trademark standards, but will also minimize overlap with the goods/services of any similar registered marks.

One potentially fatal mistake is identifying too many goods or services in a use-based application when, in fact, the applicant has not yet used the mark on all the products identified in the application. There is no crime in identifying too many goods/services in an Intent-To-Use application, but such an error in a use-based application can lead to a void registration if not corrected in time.

To reduce the risk of a likelihood of confusion rejection, a knockout search of the USPTO trademark database should be conducted before filing your trademark application. Searching for the exact mark in the same class is rather simple, but searching for other marks that might be regarded as confusingly similar requires some skill and experience (e.g., truncating your mark to find similar trademark filings).

How to respond to trademark application rejections successfully

Despite planning ahead and cautiously avoiding pitfalls, you still might receive an Office Action. It may be of little comfort, but it helps to keep in mind that USPTO trademark examining attorneys are not robots following a consistent pattern or formula (though we may wish otherwise!). We’re dealing with humans, and humans are subjective. The challenge is to persuade the human examiner that your trademark is allowable.

A successful response to a refusal to register will require deft legal arguments. What works is not merely a recitation of trademark laws, but a specific application of relevant caselaw to your particular fact pattern. Any past registrations of marks that encountered a similar situation can be highly persuasive. Finding successful registrations in similar situations takes time. Trademark examining attorneys are generally unimpressed with copy-and-paste jobs filled with conclusory statements.

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Frenda Williams
Frenda Williams
2023-02-21
I have had the pleasure of working with Vic and his team at Innovation Capital Law Group on Trademark creation and contracts. As a solo and non-tech founder, the assistance, guidance and recommendations from Vic and his team have been INVALUABLE. And, with the knowledge that I have a Solid, well versed and caring legal team I can turn to, I have the confidence I need to navigate the intricacies of the tech industry as a solo founder. With that being said, If you’re a startup and you’re looking for a legal team that speaks your language, knows the industry and makes you feel like family…. Innovation Capital Law Group is a Perfect fit for you, your company and your team. Five out of Five Stars… don’t let their brilliance blind you 😁
Shiwei Liu
Shiwei Liu
2023-02-20
Excellent service and quick response. Lots of informative documents on its website.
Chang Chien Michael
Chang Chien Michael
2023-02-20
I have worked with iCap for more than 7 years. I am very glad with his professional knowledge that 7 utility patents were granted by USPTO. Vic and his team are very efficient and knowledgeable. Every time he can transcribe my design idea perfectly in two weeks and file it with no rejection from USPTO. The other service including the granted patent following up is always in time to remind me to take actions. That is why I still stick on iCap as my first priority when I want to file a US patent.
Mats Johansson
Mats Johansson
2023-02-20
We have been happy client for 10+ years. Awesome Patent Law Firm!
Hanson Chang
Hanson Chang
2023-02-16
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Genevieve Springer
Genevieve Springer
2022-09-09
Clear, discernible tools and strategies couched within a business conceived from a genuine interest in doing right by founders.
InPlay Inc
InPlay Inc
2022-06-30
Vic and his team have been providing us with the best patent application experiences we could ever have in our entire career life! Their professionalism and technical knowledge have really saved us a lot of communication effort and time on the applications. Definitely highly recommend if anyone is looking for help with IP protection for their business.
Meg Crowley
Meg Crowley
2022-03-05
After working with Vic and his team at Innovation Capital Law Group, our organization is confident our trademarks were solid and protected. Thank you team.
Andy Dong
Andy Dong
2022-02-28
I have been using Innovation Capital Law Group for a few years and continue to use them. They have provided an excellent services on our legal issues including intellectual properties and patents . They are very responsive, easy to work with and very competent . I highly recommend them.

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