Developing a brand identity is a rewarding part of starting your own business. You can decide how you want the public to see your company and express that identity through your logo, business name, and color scheme—to name just a few. You’ll also need to trademark some of these elements to guard against other companies who might co-opt elements of your brand. However, although trademarks are essential, getting one can be a confusing and overwhelming task. Before you tackle the application, you’ll want to understand how the USPTO processes trademark applications and their reasons for refusal to register trademarks.
Substantive Reasons for Refusal of Registration of Trademark
According to the USPTO, 44.9 percent of applications filed via TEAS Plus are approved without any office actions. If you’re hoping to join their ranks, you’ll need to understand why applications aren’t approved. Here are a few of the most common substantive reasons for refusal of a trademark:
- Confusing terms or design: Your mark could be generally confused with someone else’s existing trademark. This is called “likelihood of confusion” or a 2(d) refusal.
- Unclear examples: You didn’t include representative product examples with your application—or the examples weren’t clear enough. This are often easy to fix and require a “substitute specimen,” which is usually a different screenshot of the website or photo of the product.
- Application errors: USPTO applications emphasize specificity and precision, and it can be easy to slip up if you aren’t familiar with the process. For example, choosing the wrong class for your trademark can result in rejection. Other times the applicant has chosen the wrong entity. For example they may own the application as an individual but listed a company name.
- Merely descriptive words or design: You’re trying to trademark a word or phrase that directly describes your product or service. For example, “Starchy Potatoes” or “Round Wheels” would count as merely descriptive for potatoes and wheels.
- Non-distinctive words or design: If you’re hoping to sell scissors and try to trademark “Definitely Scissors”, chances are you’ll be asked to include a disclaimer that you’re only claiming that phrase—not the word “scissors.” (Of course, trying to claim “scissors” as a trademark will result in a rejection.)
- Official designs or words such as government seals or emblems.
Even if you know what the problem is, however, it’s not always easy to correct it on your own. A skilled trademark attorney can help you avoid rejections for substantive reasons altogether.
Non-Substantive Reasons for Refusal of Registration of Trademark
It’s relatively simple to resolve non-substantive issues when registering for a trademark. Essentially, a non-substantive Office Action usually covers issues that are
These issues are straightforward and relatively inexpensive to fix. Non-substantive problems that can prevent you from getting your trademark approved typically involve the need for amendments or additional information, including:
- The goods or services aren’t identified clearly and understandably.
- The USPTO needs more background information on your mark.
- If a stylized logo is involved, you may need a better description of the design.
- You need to add a disclaimer for part of your trademark.
How Do I Avoid Trademark Rejections?
Before you begin the trademark application process, you can significantly reduce the risk of substantive and non-substantive rejections by:
- Choose a unique name: Trademarks must be
- Filter out words or phrases that seem to provide only informational matter and not brand-specific identifiers.
- Being specific in identifying your goods and services: Use descriptions that not only abide by USPTO trademark standards but will also minimize potential overlap with the goods/services of any similar registered marks.
- Being concise in identifying your goods or services: If you list too many goods and services in your use-based application—and haven’t used the mark on all of them—you won’t be successful. However, you can identify multiple goods and services in an Intent-to-Use application.
- Conducting a search of the USPTO trademark database. Trademark searches are an art—in fact, we wrote a detailed article focusing solely on them. In a nutshell, you won’t just need to search for exact matches to your trademark. You’ll also need to search for similar or comparable trademarks, which can be much trickier. A skilled trademark attorney can help you navigate these nuances and ensure your application isn’t rejected.
Of course, there’s one more step you should take before you send in your application. You’ll want to consult with an expert trademark attorney who can help you successfully register your trademark efficiently.
You don’t have to take our word for it. A study in the Stanford Technology Law Review found that 62 percent of trademark applicants who worked with a lawyer successfully registered their trademark—applicants who did not, on the other hand, had a 42 percent chance of success.
Trying to prevent a refusal of registration of your trademark can be a daunting prospect. At Bold Patents, our experienced team of attorneys can guide you through the entire application process. From concept to creation to implementation of your trademark, we’re there for you every step of the way. Contact us today!