Who wants to file a USPTO trademark application to trademark a business name and then get shot down and rejected? As many as 70% of all USPTO trademark applications are initially rejected by the examining trademark attorney at the Trademark Office who send a Trademark Office Action. Some Trademark Office actions are scary and complicated, and require an expert trademark attorney to file a proper trademark office action response. Others are fairly simple. Your USPTO trademark application will be approved if you can cut through the legalese and file a proper response. The most important decision determining your success in seeking a trademark business name is to find a trademark attorney with the skill and experience to know the difference and to has the expertise to file a proper response to the Trademark Office Action.
We hate rejection! For this reason, we recommend developing a pre-filing plan before you file a USPTO trademark application, so you receive a different type of notice. “You’ve been approved!”
An Expert Trademark Attorney is Your New Bestie for Responding to a Trademark Office Action
First-time filers sometimes use filing services such as Legal Zoom to trademark business name (s). Unfortunately, nonlawyer filing services cannot give legal advice, and they do not represent the applicants. Their sole service is to fill out a form online. The Trademark Office Action is sent directly to the applicant. It does take experience and expertise to know whether a refusal to register in a Trademark Office Action is fatal and whether your trademark application is DOA.
5 Reasons Your USPTO
Trademark Application will be Rejected
1. Failure to Perform a Registered Trademark Search
New brand owners often file before they perform a registered trademark search. Failure to perform a proper registered trademark search before filing a USPTO trademark application is like walking into a dark room without turning on the lights, hoping you won’t bump into the furniture. When you fail to perform a registered trademark search, you rely on the Trademark Office to tell you if an existing registration or pending application will block yours.
A registered trademark 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.
Wait times for the examination of applications are currently 10-12 months. When you file with a professional search and analysis, you cannot proceed to launch your product or service with peace of mind and confidence in your brand protection efforts. You may need someone to help you identify and address potential vulnerabilities in your intellectual property strategy.
2. Filing a USPTO Trademark Application for a
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. Your USPTO trademark application 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 REGISTERABLE (like “ALTOIDS”). Leave descriptive and laudatory terms to your marketing materials and out of your brand name. Here are the Rules of the Road for Selecting a Brand Name. And before you file, use the Brandaide 3-Step Trademark Registration Process SELECT | SECURE | SUSTAIN.
3. Failure to Prove Trademark Use of the Mark
Because a trademark seeks to identify the source of goods and services, trademark law requires that the mark be used to sell 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. Trademark registration will not be allowed if you have not used the trademark to sell goods and services. In the case of online stores, this means using the mark next to the shopping cart where customers see the mark at the checkout stand. Make certain to understand the rules of use and establish Brand Guidelines.
4. Likelihood of Confusion Based Upon an Earlier Filed Application
Because trademarks are source identifiers, no two parties can have the same or similar mark for the same or even related goods or services. You’d be surprised how often I have seen someone wait to file a few months after launch, only to find out 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. The most challenging rejection to overcome can be a likelihood of confusion rejection based upon “related goods” or “related services.” Related goods and services are those that are used together. An easy example is using the same mark for peanut butter and jam. These are related. The greater challenge is in services where the claims of relatedness are not well-founded but difficult to overcome. It often takes an experienced trademark attorney to analyze whether your USPTO trademark application can be amended by filing the appropriate legal arguments in the trademark office action response.
5. Technical Mistakes when Filing a Logo
There is a distinct difference between filing a design mark in color and 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 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 filed first but got rejected for this reason and didn’t answer the Office Action because she didn’t even receive it? The second filed application moved to the top and was issued the registration.
Be smart, and do your homework early—before you file your USPTO trademark application, review this Consumer Guide to the Best Trademark Service to make the smart choice that’s right for you.
Need help responding to a Trademark Office Action? Schedule a consultation to review your Trademark Office Action. The cost to secure the consult is applied to filing your response.
Originally published 7/26/2013, updated 10/5/2021, updated 05/29/2023