Why a USPTO Trademark Application Will Be Rejected

USPTO trademark application

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Who wants to file a USPTO trademark application to trademark business name and then get totally shot down, rejected? As many as 70% of all USPTO trademark applications are initially rejected by the examining trademark attorney at the Trademark Office. Some Trademark Office actions are scary, complicated, and require an expert trademark attorney to file a proper trademark office action response. Others are simple. Your USPTO trademark application will be approved if you can cut through the legalese and file a proper response. The most important decision that determines your success in applying to trademark business name is to find a trademark attorney with the skill and experience.

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!”

trademark office action response

An Expert Trademark Attorney is Your Best Friend for filing a Trademark Office Action Response

Many first-time business owners 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. They simply fill out a form online and any Office Action is sent 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.

Reasons Your USPTO Trademark Application will be Rejected

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.

1. Failure to Perform a Registered Trademark Search

New brand owners often file before they perform a registered trademark search. Failure to do a registered trademark search before filing a USPTO trademark application is much 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 are relying upon 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 a USPTO Trademark Application for a Descriptive Trademark

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 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.  And, before you file, use the Brandaide 3-Step Trademark Registration Process SELECT | SECURE | SUSTAIN. Learn More.

3. Failure to Show Use as a Trademark

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 the use of 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.

trademark business name

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 many times I have seen someone wait to file a few months after launch, 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.  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 the use of the same mark for peanut butter and for jam. These are related. The greater challenge is in the area of services where the claims of relatedness are not well-founded but difficult to overcome.  It often takes an experienced trademark attorne  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 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 even 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 USPTO trademark application, review this Consumer Guide to the Best Trademark Service to make the smart choice that’s right for you.

Originally published 7/26/2013, updated 10/5/2021.

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