All That You Want To Know About Trademark Application Rejections
Most trademark applications arenot approved on their first go-around as per the USPTO trademark tactics.While the reasons for trademark application rejections are many, they usuallyfall under two categories:
- Refusal of registration (substantive Office Action); and
- Non-substantive issues
Non-substantive problems are prettysimple and cheap to resolve, with the exemption of questionable trademarkdisclaimers. Instances of non-substantive problems comprise requests foramendments or further information in regards to the following:
- recognition of goods and services
- background on the meaning of the mark in the industry or in a foreign language
- explanation of the mark if a stylized logo (design mark) is included
Considerably more cost and effortwill be necessary to overcome a substantive refusal to register your trademark.Instances of substantive grounds for rejecting a trademark applicationcomprise:
- likelihood of confusion with a prior filed or registered trademark;
- merely descriptive mark (i.e., your mark explains a characteristic, quality, or feature of the goods or services identified in your application); and
- failure to indicate source or function as a trademark (e.g., informational matter, vastly used messages, etc.).
Before filing your online trademark registration application,know that certain pre-filing measures can decrease the risk of substantive andnon-substantive rejections considerably. Here are few tips.
- When brainstorming, exclude those marks that seem descriptive or generic of your products. You should also filter out words or phrases that appear to provide only informational matter, and lack the prospective to become a source identifying brand that will differentiate your company.
The recognition of goods andservices will necessitate careful consideration. You want to use descriptionsthat not only match to USPTO trademark standards, but will also reduce partlycover with the goods/services of any related registered marks.
One potentially lethal mistake isidentifying too many goods or services in a use-based application when, infact, the applicant has not yet utilized the mark on all the productsidentified in the application. There is no crime in finding out too manygoods/services in an Intent-To-Use application, but such an error in ause-based application can lead to an annulled registration if notcorrected in time.
To decrease the risk of aprobability of confusion rejection, a knockout search of the USPTO trademark registration service databaseshould be carried out before filing your trademark application. Searching forthe precise mark in the same class is rather easy, but searching for othermarks that may be regarded as confusingly similar necessitates some skill and experience.
Inspite of planning ahead and avoiding drawbacks cautiously, you may get anOffice Action. It may be of little comfort, but it assists to keep in mind thatUSPTO trademark examining attorneys are not robots following a steady patternor formula. They are dealing with humans, and humans are subjective. Thechallenge is to convince the human examiner that your trademark registration is permissible. A successful response to arefusal to register will necessitate deft legal arguments.
