All That You Want To Know About Trademark Application Rejections

Most trademark applications are not approved on their first go-around as per the USPTO trademark tactics. While the reasons for trademark application rejections are many, they usually fall under two categories:

• Refusal of registration (substantive Office Action); and
• Non-substantive issues

Non-substantive problems are pretty simple and cheap to resolve, with the exemption of questionable trademark disclaimers. Instances of non-substantive problems comprise requests for amendments 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 effort will be necessary to overcome a substantive refusal to register your trademark. Instances of substantive grounds for rejecting a trademark application comprise:

• 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 and non-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 and services will necessitate careful consideration. You want to use descriptions that not only match to USPTO trademark standards, but will also reduce partly cover with the goods/services of any related registered marks.

One potentially lethal mistake is identifying too many goods or services in a use-based application when, in fact, the applicant has not yet utilized the mark on all the products identified in the application. There is no crime in finding out too many goods/services in an Intent-To-Use application, but such an error in a use-based application can lead to an annulled registration if not corrected in time.

To decrease the risk of a probability of confusion rejection, a knockout search of the USPTO trademark registration service database should be carried out before filing your trademark application. Searching for the precise mark in the same class is rather easy, but searching for other marks that may be regarded as confusingly similar necessitates some skill and experience.

In spite of planning ahead and avoiding drawbacks cautiously, you may get an Office Action. It may be of little comfort, but it assists to keep in mind that USPTO trademark examining attorneys are not robots following a steady pattern or formula. They are dealing with humans, and humans are subjective. The challenge is to convince the human examiner that your trademark registration is permissible. A successful response to a refusal to register will necessitate deft legal arguments.