Reasons a Trademark May Be Denied
Sept. 29, 2022
As an entrepreneur, you’ve been following an idea for an item you are passionate about and opening a retail shop. You want to protect your brand, so you apply to the U.S. Patent and Trademark Office (USPTO) for a trademark, and the application is denied.
You consult with an intellectual property/trademark attorney, who advises you to be more focused and unique in your brand/company name. You come up with a title including your last name, but your attorney advises you that trademarks based on surnames – a family name or last name – are also routinely rejected, and you're back to ground zero in your brand name/trademark quest.
If you’re attempting to register a trademark for your product or service, or worse, you’ve been rejected, contact the Ream Law Firm, L.L.C., today for legal support. Attorney Dale J. Ream has 25-plus years of helping clients secure their trademarks and patents to protect their enterprises. He can help you throughout the application process or throughout the appeals process.
The Ream Law Firm, L.L.C. operates out of Kansas City, Missouri, but serves individuals and businesses throughout the nation because of our encyclopedic knowledge of intellectual property law and our many years of experience in getting applications approved and protecting clients against infringement by others.
The Trademark Application Process
A trademark, according to the USPTO, can be a word, phrase, logo, or symbol that represents your company or its products. A trademark protects your company’s intellectual property. Federal trademark law places two requirements on qualifying for a registered trademark:
You must use or intend to use the mark in commerce.
The mark must be distinctive to your business.
Commerce means the mark must be used for a product or service that crosses the state, national or territorial lines, which is simpler to accomplish in this day and age when companies routinely offer their products and services online. Be advised, however: if you submit an intend-to-use application pending the opening of your business, you will need to file another application and pay another fee when the business is operational, and the trademark is needed to represent it.
Before you submit an application for a trademark, the USPTO requires you to do a search for competing marks. If someone or some business is using the same mark for a similar product or service, you will not be able to register your similar mark. If the mark is similar, but the product or service is different the application may be approved.
You can hire an attorney to research for you, but you can also start the process by accessing the USPTO’s search engine, Trademark Electronic Search System (TESS), which can be accessed on the agency’s website. Once the search is complete and your mark seems not to infringe on anyone else’s, you can submit an application, also online.
After your application and fee, you should hear from the USPTO examining attorney assigned to your case in about three months. The examining attorney will give you a status update and advise you if additional information or corrections are needed. In all, the entire process can take 12 to 18 months.
Obtaining a Trademark Clearance Opinion Letter
If you contract with a trademark attorney to do your search for you, the attorney can – upon completion of the search – provide you with what is called a trademark clearance opinion letter. This letter should be submitted with your application, as it will add extra credence to the search conducted and the results. The letter helps show that the proposed mark qualifies for registration, which can speed up the examination process.
Reasons Trademark Applications Are Rejected
In addition to the trademark rejection reasons cited in the opening discussion – that the mark is too descriptive or that it relies on a surname – other reasons for denial include:
LIKELIHOOD OF CONFUSION: This is probably the most cited reason. If the probability exists that the public will confuse your mark with someone else’s already-existing mark, it will be rejected. You have to ask yourself, would your mark for “House of Waffles” be confusing to customers already familiar with the restaurant chain called “Waffle House”?
THE LOGO IS MERE ORNAMENTATION: If an application is submitted for something that is merely decorative, it could well be rejected. If a line of tee shirts features an image of a bird in flight, and the business owner tries to trademark it for his company, called Fabric Makers, Inc., it might well be rejected as merely an ornament, not a mark.
OFFENSIVE OR SCANDALOUS: The Lanham Act, which is the nation’s primary trademark statute, lists “scandalous, disparaging and immoral” as the first three reasons for rejecting a mark. These are listed before “likelihood of confusion” or “deception” are even cited. The trademark for the Washington, D.C. football team – the Redskins – was canceled on these grounds in 2014 after it had previously been approved.
OTHER REASONS: You cannot use images of a flag—the U.S., state, or any other country’s—and you cannot use the image, likeness, or signature of a living or deceased person without their permission or the permission of their heirs.
Appealing a Decision
If your initial application is rejected (officially known as an Office Action), you can request a reconsideration, which means it will be submitted to a different examining attorney who will do an independent evaluation and issue a decision without reference to the earlier review process.
If your application is still not successful, you can submit an official appeal to the Trademark Trial and Appeal Board (TTAB). If the board rejects your appeal, you can ask for a reconsideration.
After a second TTAB rejection, your only remaining option is to file an appeal with the United States Court of Appeals for the Federal Circuit.
Work with an Experienced Trademark Attorney
The best approach is to do everything with the assistance of an attorney familiar with the trademark registration process – and the reconsideration and appeals process – to help ensure your initial application will be comprehensive enough to speed the process toward a conclusion.
Wherever you are in the U.S., rely on the Ream Law Firm, L.L.C. for all your intellectual property needs – application, registration, defense against infringement, and everything in between. Attorney Dale J. Ream has the knowledge, experience, and resources to help you secure the legal protections you desire. He proudly serves clients in the Kansas City metro area, including Johnson County, Kansas, and Jackson County, Missouri.