Reasons For Trademark Application Rejections

Maximum trademark applications are not approved on their first go-around as per the USPTO trademark statistics. Only a few applications receive a “first action approval”. This means that Office Actions are published against the huge majority of trademark applications. While the reasons for Online Trademark Registration application rejections are several, they fall under two categories usually:

• Refusal of registration and
• Non-substantive problems

Non-substantive problems are quite straightforward and cheap to resolve, with the exemption of doubtful trademark provisions. Instances of non-substantive problems comprise requests for amendments or further information in regards to the following:

• identification of services and goods
• background on the connotation of the mark in a foreign language or in the industry
• explanation of the mark if a stylized logo is involved

Significantly more cost and effort will be necessary to overcome a substantive denial to get your trademark registered. Instances of substantive grounds for refusing a trademark application comprise:

• likelihood of confusion with a previous filed or registered trademark (i.e., your mark is too alike to someone else’s mark filed prior to your application);
• failure to point out function or source as a trademark 
• merely descriptive mark (i.e., your mark explains a feature, characteristic or quality of the goods or services recognized in your application); and

Tips to minimize or avoid trademark rejections

Prior to filing your Trademark registration application, know that certain pre-filing measures can decrease the risk of substantive and non-substantive denials significantly. Here are some tips.

If you are brainstorming, exclude those marks that seem descriptive or generic of your products. You should also sort out phrases or words that seem to offer only informational matter, and be deficient in the prospective to become a source identifying brand that will differentiate your company.

The identification of goods and services will necessitate careful contemplation. You wish to use depictions that not only match to USPTO trademark benchmarks, but would also reduce going beyond with the services/goods of any related registered marks.

One possibly serious error is recognizing several goods or services in a use-based application when, in fact, the applicant has not yet used the mark on all the products identified in the application. There is no offense in recognizing several goods/services in an Intent-To-Use application, but such a mistake in a use-based application can result in void registration if not rectified in time.

To lessen the hazard of a probability of perplexity rejection, a triumph search of the USPTO trademark file must be performed prior to filing your trademark application. Looking for the precise mark in the same class is quite simple, but searching for other marks that may be considered as confusingly similar necessitates some experience and skill.

Tips to respond to trademark application refusals successfully

In spite of planning in advance and cautiously staying away from drawbacks, you may get an Office Action. It might be of somewhat console, but it assists to remember that USPTO trademark examining legal representatives are not robots sticking to a steady formula or pattern. The challenge is to convince the human examiner that your Trademark Registration Service is permissible.