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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