Who wants to go to the expense and time to file for a federal trademark registration for a new brand name and then get totally shot down, rejected? As many as 80% of all trademark filings are initially rejected, with the Examining Lawyer at the USPTO issuing an Office Action refusing registration. Some Office Actions are scary, complicated, and require a lawyer. Others are simple and registration can still issue, if you can cut through the legalese and file a proper response.
Many first time business owners use filing services such as Legal Zoom. Unfortunately, these services can not give legal advice, and they do not represent the applicants. They simply fill out a form on line and any Office Actions come directly to the applicant. It does take experience and expertise to know which Office Actions can be easily overcome, and those which are fatal to the applicant's filing.
Here are the most common reasons applications get shot down, and how you can be avoid them by doing some homework ahead of time.
A search tells you if a competitor is already using your chosen mark or a similar one. It can also provide clues on how to expand protection beyond what you dreamed possible.
1. Failure to Search. New brand owners often file before they search, which is like walking into a dark room without turning on the lights, hoping you won’t bump into the furniture. They don't want to spend the money for the search. When you neglect to perform a search of TM Office records, state trademarks, trade directories and online search engine results prior to filing, you are relying up on the Trademark Office to tell you if an existing registration or pending application will block yours. Not a good idea; It can be a huge waste of time and money.
2. Filing to Protect a Descriptive “Mark.” A trademark seeks to identify and distinguish the source of the goods of one party from its competitors. If your brand name describes your product or service, or one of the features or characteristics, it’s not a trademark. Trademark registration will be denied because your use would prevent others from describing their own goods or services! If you want to obtain a trademark registration, choose a name that is distinctive (like “ALTOIDS”). Leave descriptive and laudatory terms to your marketing materials, and out of your brand name. Rules of the Road for Selecting a Brand Name.
3. Improper Use on Your Website. Because a trademark seeks to identify the source of goods and services, trademark law requires that the mark be used for the sale of those goods and services – it does not protect mere ideas or dreams. Trademark Office lawyers have the Internet, too. They’ll look at your website and also search the Internet. If you have not used the term to actually sell goods and services, trademark registration will not be allowed. In the case of online stores, this means use of the mark next to the shopping cart where customers see the mark at the checkout stand. Rules for TM Use on a Website.
4. Filing too late. Because trademarks are source identifiers, no two parties can have the same or similar mark for the same goods or services. You’d be surprised how many times I have seen someone wait to file a few months after launching, only to find out that someone else had chosen the same name and filed before they did. I had a recent case where the two parties, both wineries, filed for the same mark three weeks apart – and neither knew of the other.
5. Confusing color versus black and white design mark filings. There is a distinct difference between choosing to file a design mark in color versus filing it in black and white. If you want to claim color as part of your design , file a color logo and describe the colors. Claims of color provide a more limited scope of protection since the registration issues only for the colors claimed. A claim of no color means you claim any and all colors. If you want to file it in black and white, and obtain broader protection, then don’t submit a color drawing or you will get booted out. Remember the winery case my client actually filed first but got rejected for just this reason and didn’t answer the Office Action because she didn’t ever receive it. The second filed application moved to the top and was issued the registration.
Be smart, do your homework early—before you file your trademark. And seek some expert advice to do it right the first time.
By Cheryl L.Hodgson Originally published 7/26/2013, updated 9/1/2014