What is a trademark refusal?

What are the different types of trademark refusals?

As much as you try to avoid it, you may receive a refusal to register your mark by the USPTO. Not all trademark refusals are the same. Some are based on similarities to prior registrations or pending applications. Other refusals may be based on descriptive qualities in the mark. There is not a one-size-fits-all approach to overcoming a trademark refusal. You need to understand the specifics of the refusal, including any cited registrations being cited by the trademark examining attorney. We have written more detailed posts dedicated to certain types of refusals, so this article will generally summarize the more common refusals and strategies worthy of consideration.

What is the confusion refusal?

This is arguably the most subjective and common refusal a trademark application may encounter: the notion that the applied-for mark is confusable with another registered mark. It’s the “likelihood” in likelihood of confusion that makes it so frustratingly subjective. Shouldn’t “likelihood” be viewed as probability of confusion? There are cases that suggest so.

One practical thing you can do to reduce the risk of a confusable rejection is to have a knockout search done before filing your trademark application.

What is the descriptiveness refusal?

A descriptiveness refusal is a refusal to register your trademark on the grounds that it contains certain descriptive qualities. For example, the mark may contain words that describe a characteristic, quality or nature of your product or service. If you choose to argue against the refusal, which can be expensive, be prepared to provide examples of similar marks that were registered. While a knockout search might not help avoid a descriptive refusal, the counsel of an experienced trademark attorney can help you navigate around potential rejections. Sometimes adding a unique word to an otherwise descriptive term may help.

If your trademark application has multiple goods, consider deleting or dividing out the more descriptive goods. You can combine such an amendment with arguments as to how the mark is not descriptive of the remaining goods.

What is the failure to function refusal?

A failure to function rejection means that your mark is deemed incapable of identifying the source of a product or service. This is a common rejection applied, for example, to slogans or sayings might be interpreted by the product as a social message as opposed to a brand. It may be challenging to anticipate a refusal based on failure to function as a trademark. If you are thinking of trademarking a well known phrase that has the potential to be regarded as informational matter or a social message, talk to your IP attorney first.

First rejections vs. Final rejections

If you choose to argue against a refusal, put the best effort in your first response because it may well end up being your only response. If you get a Final Office Action repeating the refusal, statistics generally show the majority of further arguments/responses to be ineffective. Though you have the right to argue against a final refusal, such as by filing an appeal, your chances of success may be quite low. Instead, consider other strategies that may be more cost-effective such as cancellations, in full or in part, or consent agreements.

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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.
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2023-02-20
We have been happy client for 10+ years. Awesome Patent Law Firm!
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2023-02-16
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Genevieve Springer
2022-09-09
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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.
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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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