Why is my trademark application being refused?
Author: Karen Y. Kim
There are a number of reasons the USPTO might refuse to register your trademark. In fact, most trademark applications are not approved on the first attempt. Still, familiarity with some of the more common reasons a trademark application may be denied before you being the application process may save you time and money.
There are two general categories for application refusals:
- Non-substantive issues
- Substantive refusal of registration
Non-substantive issues are usually pretty straightforward and fairly easy to resolve. Non-substantive issues include requests for further information or amendments regarding things such as:
- description of the stylized logo or design mark
- identification of the goods or services
- the meaning of the mark in a foreign language or in the industry
One of the potentially more difficult non-substantive issues is trademark disclaimers. An examining attorney may think that part of the mark is merely descriptive or generic and require a disclaimer of exclusive use of that portion of the mark. Often the disclaimer requirement is justified such as the use of the word “company” or “bank” in a mark, but sometimes the disclaimer requirement is questionable and requires a substantive response.
Overcoming a substantive refusal to registration takes significantly more time and expense. The five most common substantive refusals are:
- Likelihood of confusion
The most common reason a trademark is refused registration is for the likelihood that the consuming public with confuse your mark with someone else’s mark. A mark does not need to be identical to yours or have the same goods or services as your mark for the USPTO to deny your application as the standard is likely to be confused.
There are a number of DuPont factors which the USPTO will consider to determine whether there is a likelihood of confusion between two marks. The two most important are: (1) the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression, and (2) the relatedness of the goods or services as described in the application and registration(s). It is important, therefore, to conduct a thorough trademark search prior to selecting a mark.
- Merely descriptive or deceptively misdescriptive
The USPTO will refuse registration of a mark as merely descriptive if it immediately describes an ingredient, quality, characteristic, function, feature, purpose, or use of the identified goods or services. For instance, the mark “CITY’S BEST DONUTS” would be merely descriptive of donuts, and the mark “FRUITY” would be merely descriptive of juices.
A mark may be refused as deceptively misdescriptive if (1) the mark misdescribes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services; and (2) the misrepresentation conveyed by the mark is plausible. For instance, the mark “RASPBERRY WINE” would be deceptively misdescriptive of wine not containing or made from raspberries, and the mark “FOOTBALL PLAYERS” would be deceptively misdescriptive of entertainment services and video games not pertaining to football.
- Primarily merely a surname
You cannot register a mark if the primary significance to the purchasing public is a surname, or a last name. For example, the mark “SMITH’S” would be considered primarily merely a surname and refused registration. Also, the mark “MACMILLAN ELECTRONICS” would be considered primarily merely a surname for electronics products. It is possible to obtain a registration for a mark that is primarily merely a surname but only after that last name is established as the brand associated with a particular product.
- Primarily geographically descriptive or primarily geographically deceptively misdescriptive
A mark will be refused registration if the examining attorney deems it primarily geographically descriptive, that is if (1) the primary significance of the mark is a generally known geographic location; (2) consumers would be likely to think that the goods or services originate in the geographic place identified in the mark; and (3) the mark identifies the geographic origin of the goods or services. For instance, the mark “LOS ANGELES PRODUCTIONS” would be primarily geographically descriptive of a movie production company that is based in Los Angeles, California.
The USPTO will refuse registration of a mark as primarily geographically deceptively misdescriptive if (1) the primary significance of the mark is a generally known geographic location; (2) consumers would be likely to think that the goods or services originate in the geographic place identified in the mark; (3) the goods or services do not originate in the place identified in the mark; and (4) the misrepresentation would be a material factor in a significant portion of the relevant consumers’ decision to buy the goods or use the services. For example, the mark “CRATER LAKE” would be primarily geographically deceptively misdescriptive for water that does not come from Crater Lake.
- Ornamentation
An examining attorney will refuse registration if the mark is merely a decorative feature or part of the “dress” of the goods. Such matter is merely ornamentation and does not function as a trademark by identifying and distinguishing the applicant’s goods from those of others. For example, the mark “I LOVE NEW YORK” in large letters across most of the upper half of a T-shirt would be a primarily ornamental slogan that is not likely to be perceived as a trademark. Likewise, the mark “KEEP CALM” in large, bold letters covering one side of a coffee mug would be primarily ornamental, not a trademark.
Other possible but less common refusals to registration include the following:
- consist of or incorporate the flag, coat of arms, or other insignia of the United States, one of the states or municipalities of the U.S., or any foreign nation, or that simulates the flag, coat of arms, or insignia of a country or state
- words, symbols, emblems, decorations, characters, etc., which are prohibited or restricted from use by federal statutes or regulations
- the name, portrait, or signature of a particular living individual without consent
Typically, an applicant is given six months to respond to an Office Action containing any of these refusals. With the Trademark Modernization Act going into effect on December 27, 2021, the time provided to submit a response may be as short as six weeks to as long as six months. A successful response to an Office Action will require skillful legal arguments to overcome the refusal. The key is to find the relevant case law that applies to your particular facts and persuade the examining attorney that your trademark should be allowed to register.