Next Steps After Trademark Refusal

What to do if your trademark is refused?

When you receive a notice that your US trademark application has been refused (usually in the form of an Office Action), it might feel like a significant setback on your journey to establishing a strong brand identity. However, this is not the end of the road. A trademark refusal from the United States Patent and Trademark Office (USPTO) or any other trademark authority is a hurdle that many businesses face and overcome with strategic actions and perseverance. This comprehensive guide explores what to do if a trademark is refused, turning a moment of challenge into an opportunity for brand strengthening and clarification.

What is the most common reason a trademark might be rejected?

Trademark Refused

The most common reason a trademark application gets rejected by the United States Patent and Trademark Office (USPTO) is because it is too similar to an existing registered trademark and is likely to cause confusion. Another common reason is that the mark is descriptive or generic of the goods/services.

Specifically, Section 2(d) of the Trademark Act prohibits registration of a mark that is confusingly similar to a mark already registered or in prior use. The USPTO examines new applications against its database of existing registered marks as well as pending applications.

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Likelihood of Confusion Factors

Some key factors the USPTO considers in determining likelihood of confusion include:

1. Similarity of the marks If the marks look and/or sound very similar when viewed/heard, this increases likelihood of confusion.
2. Relatedness of the goods/services If the marks will be used on related or complementary products/services, there is a greater chance consumers could be misled.
3. Established consumer associations If an existing mark is very famous or well-known, even dissimilar marks on other goods may be refused to prevent dilution. Survey evidence may be helpful.
4. Sophistication of consumers Confusion may be more likely for inexpensive goods purchased by ordinary consumers versus expensive/technical products.
5. Evidence of actual confusion Any evidence that relevant consumers have already been confused between the two marks.

Descriptiveness Factors

The USPTO looks at the mark's meaning to the average consumer, dictionary definitions, usage in the industry, visual depictions, and foreign equivalents to assess if it merely describes the goods/services. The key question is whether consumers would immediately understand the mark as describing a feature or characteristic of what it represents.

Understanding the Refusal

The first step after receiving a refusal notice is to understand the reasons behind the decision. Trademark refusals typically fall into two main categories: substantive refusals and non-substantive refusals. Substantive refusals may involve issues like likelihood of confusion with an existing trademark, descriptiveness, or generic terms. Non-substantive refusals, on the other hand, could be due to procedural issues such as improper specimen or incorrect classification of goods and services. Carefully review the refusal letter to identify the specific reasons for the refusal and assess your options for response. Contact an attorney if you have any questions.

Responding to Non-Substantive Refusals

Non-substantive or procedural refusals are often easier to address. They may require submitting additional information, correcting application errors, or providing clarification to the USPTO. It’s crucial to address these issues comprehensively and within the deadline provided by the trademark office, usually within three months from the date of the refusal notice (six months for 66a applications based on Madrid Protocol. A well-prepared response can often clear up misunderstandings or deficiencies in the application, leading to the approval of the trademark.

Tackling Substantive Refusals

Substantive refusals require a more nuanced approach. Depending on the nature of the refusal, here are strategies you might consider. Remember, professional help is available to help you overcome the objection.

1. Argumentation and Persuasion

If you believe that the examining attorney's assessment is incorrect or that your mark does indeed have distinctive qualities, you can argue your case. This might involve providing evidence of the mark’s distinctiveness, such as proof of secondary meaning acquired through extensive use in commerce. A persuasive argument backed by solid evidence can sway the decision in your favor. An extension for a further three months is available if you need more time.

2. Amendment of the Application

In some cases, amending the application can overcome a refusal. This could involve narrowing the scope of goods and services to avoid confusion with existing trademarks or amending the application to seek registration on the Supplemental Register if your mark is deemed descriptive but has the potential to acquire distinctiveness.

3. Consent Agreements

If the refusal is due to a likelihood of confusion with an existing mark, sometimes obtaining a consent agreement from the owner of the conflicting mark can resolve the issue. Such agreements indicate that both parties believe their marks can coexist without causing confusion in the market.

4. Appeal to the Trademark Trial and Appeal Board (TTAB)

If your response to the refusal does not result in approval, you have the option to appeal the decision to the Trademark Trial and Appeal Board (TTAB). This appeal is a legal proceeding where you can further argue your case. It’s often beneficial to seek the assistance of a trademark attorney to navigate the complexities of an appeal.

Engaging Professional Help

Navigating the aftermath of a trademark refusal can be complex, particularly when dealing with substantive issues. Engaging a trademark attorney can provide several advantages. An experienced attorney can help you understand the nuances of the refusal, advise on the best course of action, and prepare and submit responses or appeals on your behalf. Their expertise can significantly increase your chances of overcoming the refusal.

Learning from the Experience

A trademark refusal is not just a setback; it’s a learning opportunity. It can provide valuable insights into the trademark registration process, the importance of thorough trademark searches before application, and the complexities of trademark law. Use this experience to refine your approach to branding and trademark registration in the future.

Moving Forward with a New Application

In some instances, it might be more strategic to withdraw the current application and file a new one. This could be the case if significant changes to the mark or the goods and services associated with it are necessary to overcome the refusal. Starting fresh with a new application, informed by the lessons learned from the refusal, can sometimes be the fastest path to securing trademark protection.

Receiving a refusal for a trademark application is a common hurdle in the brand-building journey, but it's not insurmountable. By understanding the reasons for the refusal, responding appropriately, and possibly engaging professional assistance, you can navigate this challenge effectively. Whether through argumentation, amendment, consent agreements, or appeal, there are several paths to overcoming a refusal. Moreover, this process can offer invaluable lessons that strengthen your brand and refine your approach to trademark registration. Remember, a refusal is not the end but a step in the process of establishing a strong, legally protected brand identity.

What kinds of office action rejections can you receive?

- Specimen of Use

- Mark on Drawing Differs from Mark on Specimen

- Specimen Unacceptable

- Mark Differs on Drawing and Specimen

- Sections 1 and 45 Refusal

– Specimen Does Not Show Use

- Amended Identification of Goods Required

- Proper Classification of Goods

- Required Identification and Classification of Goods and Services

- Multiple-Class Application

- Requirements Amended/Complete

- Mark Description Required Amended/Complete Color Claim Required

- Domicile Address Required

- DOMICILE REQUIREMENT

- Disclaimer Required

- Disclaimer of Descriptive Wording Required

- Disclaimer

- REQUIREMENT DISCLAIMER

- Attorney Requirement

- Notice of Incomplete Response

– Response Not Signed by Applicant’s Attorney

- Trademark Counsel Suggested

- Advisory: Applicant May Wish to Seek Trademark Counsel

- U.S. Counsel Required

- U.S. Licensed Attorney Required

- U.S.-LICENSED ATTORNEY REQUIRED

- Likelihood of Confusion (2d) with another trademark

- 2d Refusal - Section 2(d) Refusal Likelihood of

- Confusion Section 2(d) Likelihood of Confusion

- Refusal Advisory: Prior - Pending Applications

- Advisory regarding Potential Section 2(d) Refusal

- Prior-Filed Application

- Descriptiveness or Genericness (2e) of the Trademark

- 2e Descriptiveness Refusal 

- SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE

- Section 2(e)(4) Refusal

– Mark is Primarily Merely a Surname

- Section 2(e)(2) Refusal – Primarily Geographically Descriptive

- Potentially Deceptive & Information

- Requirement Amend Identification to Avoid Deceptiveness

- Acquired Distinctiveness Advisory: Claim of Acquired Distinctiveness Under Trademark Act Section 2(f)

- Acquired Distinctiveness Claim

- Controlled Substances Act Refusal - Food, Drug, and Cosmetic Act Refusal

- trademark coexistence agreement uspto