In the year 2023 alone, 737,018 trademark applications have been filed, according to the USPTO statistics. If you’re here, your application got a refusal, or you are making sure you are safe from a refusal before you file for your mark.
In this blog, we discuss common grounds for a trademark refusal by the USPTO and the next possible steps that could be taken to file an appropriate response to the refusal.
Before we dive into the topic, it’s important to understand more about what a refusal means in this scenario. First, the US is one country that offers some common law protection to your intellectual property without even an official registration.
Registering your brand with the United States Patent & Trademark Office is crucial for maximum protection. Now, some possible grounds for refusal could arise during the registration process.
These include primarily geographic descriptive refusal, failure to function, generic refusal, descriptive refusals, ornamental refusals, and more.
A trademark refusal is typically communicated through an Office Action issued by the Examining Attorney. The Examiner responsible for the application will outline the grounds for refusal, which may include one or more reasons. As the applicant, you or your legal representative in trademark matters will have the chance to prepare and submit a response to address the refusal.
Common Grounds for Refusal
1. Merely Descriptive Trademarks
Merely Descriptive and Deceptively Misdescriptive (and Deceptive) trademarks are critical reasons for a possible refusal.
Merely descriptive trademarks directly describe a product or service’s characteristics and are often not eligible for trademark registration. They may become eligible if they acquire a secondary meaning over time.
Deceptively misdescriptive and deceptive marks, on the other hand, convey false or misleading information about a product or service, with the former unintentionally misrepresenting a feature and the latter doing so intentionally.
Both categories (Descriptive mark and Misdescriptive mark) are generally ineligible for registration, as they can deceive consumers and violate fair competition principles. These distinctions are essential for trademark applicants, as the United States Patent and Trademark Office (USPTO) scrutinizes applications to ensure trademarks accurately convey information and protect consumers from misleading or false claims. It emphasizes the importance of selecting distinct, truthful trademarks for brand registration and protection.
2. Likelihood of Confusion
One of the most common reasons for refusing a trademark application is the ‘likelihood of confusion,’ which means that your trademark has the potential for confusion with another registered trademark.
For example, Global coffee chain Starbucks filed a case against a coffee brand ‘Sardarbuksh’ in India. They pleaded that the brand name was too similar to Starbucks, and the Courts eventually directed Sardarbuksh to change their name. This could be mitigated by doing a comprehensive trademark search before filing.
When evaluating the likelihood of confusion, trademark examiners and courts assess factors such as the similarity of marks, the relatedness of products or services, and the consumer’s perception. If there’s a high likelihood that consumers could confuse one mark with another, especially in terms of the source or origin of the goods or services, the new mark may be denied registration. Every trademark application is evaluated based on unique circumstances to determine the likelihood of confusion.
This aims to safeguard consumers from confusion and ensures that trademarks effectively serve their primary function of distinguishing one brand from another in the marketplace. Understanding and addressing the likelihood of confusion is essential for trademark applicants and the legal system to maintain the integrity of trademark rights. Therefore, primary significance is given to uniqueness.
3. Wrong Trademark Class
Before applying with the USPTO, it is essential to pick a suitable class for your TM application. The USPTO provides a list of 45 classes for goods and services. 34 classes for goods and 11 classes for services. Simply put, a mark is protected in the classes it is registered in.
Trademark classification is integral to the search & clearance, application, and registration process. For example, an already registered mark that is classified as a restaurant will not be in conflict with an applied-for mark with a similar name/logo if it is classified as a financial advising service.
Similarly, you can apply in as many trademark classes as you want; one trademark could fall under several categories.
4. Surnames as Brand Names.
If the purchasing public’s general perception of the mark primarily centers around it being a surname, then the application for registration will be declined. In simpler terms, if the public predominantly links your last name to the mark rather than connecting it with the product itself, you will receive a surname trademark refusal.
This differentiation is the foundation that permits renowned companies like Johnson & Johnson, Starbucks, and Marriott to safeguard their legally registered trademarks. The essential factor is establishing secondary meaning, with “surnames” among the primary categories acknowledged in Lanham Act § 2(f).
Your last name must have primary significance and should be closely associated with the product, essentially becoming a brand, before it can be eligible for registration. Until then, the ability to demonstrate secondary meaning is lacking, and trademark registration with the USPTO is not possible.
5. Oranamental Marks
The term ‘Ornamental” refers to a purely decorative design that lacks distinctiveness as a source identifier. Trademarks should distinguish the origin of goods or services. If a design is considered purely ornamental, it won’t receive trademark protection. A design element must be distinctive and signify the source to be eligible. If your trademark is refused as ornamental, you may need to revise it to make it more distinctive or choose a different, more distinctive trademark.
Imagine a clothing company that wants to trademark the word “Sunshine” in a simple, plain font on their t-shirts. The USPTO may refuse this trademark if they determine that the word “Sunshine” in that font is purely decorative and doesn’t sufficiently distinguish the clothing as originating from that specific company.
6. Geographically Descriptive
Geographically descriptive trademarks directly describe the geographic origin of the goods or services. These types of trademarks are generally not registrable because they can’t serve as a unique source identifier. Here’s a hypothetical example:
Let’s say there’s a company in New York that produces delicious bagels and wants to trademark the phrase “New York Bagels” for their product. In this case, “New York” directly describes the geographic origin of the bagels. Since this information is descriptive and doesn’t distinguish the bagels from those produced elsewhere, the USPTO might refuse to register this trademark, as it’s geographically descriptive.
To make it eligible for trademark protection, the company could consider adding a distinctive element to the trademark, such as a unique logo, slogan, or packaging design, that goes beyond just the geographic description. This would help the trademark serve as a more robust source identifier for their specific bagels.
Other Factors to Keep in Mind
There could be other grounds for refusal given by the USPTO. In recent years, the trademark office has emphasized the following reasons in evaluating a trademark application. It is essential to understand that each case is assessed on its own merits to ensure they are distinctive or have acquired distinctiveness through usage.
- Marks that identify a column or section of a printed publication
- Title of a single creative work
- Name and pseudonyms of an artist or author
- Name or design of a character in a creative work
In conclusion, when you’re in the process of trademark registration, it’s essential to be aware of the common reasons for trademark refusal to avoid unnecessary setbacks and delays. Understanding these reasons for refusal and taking proactive steps to address them can increase your chances of successfully registering your trademark.
Whether ensuring your trademark is not too ornamental, steering clear of geographically descriptive terms, or addressing similar issues with existing trademarks, your TM application deserves careful attention.
If you’re facing trademark refusal or want to navigate the trademark registration process successfully, don’t hesitate to contact a trademark attorney. They can provide valuable guidance and support to help you protect your brand effectively.
Sahil Malhotra is an Intellectual Property Attorney, who founded Drishti (“vision”) law because of his vision in protecting dreams and ideas.
He provided individuals and small businesses with an opportunity to enhance their IP’s value by helping them register trademarks and successfully argue against office actions. In addition to his training and experience, he has been deeply involved in the multifaceted IP portfolio at UIC and continues to be associated with IP organizations and conferences.
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