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.