7 Common Reasons for Trademark Refusals
Achieving trademark registration can be a road filled with twists and turns (aka, dreaded trademark refusals). Let’s say you’ve cleared some major hurdles:
You’d think you’re in the clear and it’s smooth sailing all the way to trademark registration, right? Unfortunately, that’s not always the case.
There are a number of reasons the USPTO may refuse your trademark application. Let’s explore 7 of the most common reasons for trademark refusals and what can be done. Hint – an excellent trademark services company or trademark attorney will do all they can to ensure you’re not hit with any of these refusals.
Trademark Refusals: What You Need to Know
Once you’ve submitted your initial trademark application and paid the necessary fees, your application enters the intricate realm of the United States Patent and Trademark Office (USPTO). It’s assigned a serial number and scrutinized by a trademark examining attorney. The attorney’s job is to ensure that your application complies with all legal requirements and that your trademark is eligible for registration.
If the examining attorney believes that your trademark isn’t eligible for registration, they’ll issue what’s known as an “office action.” This formal letter explains the reasons for refusing registration and may provide suggestions on how to address the issues. Your response to the office action is crucial, and you must correct the problems outlined within the specified timeframe. If your response successfully addresses all the concerns, the examining attorney will approve your trademark for publication. If you’re getting a trademark refusal, this first office action is where it’ll appear.
However, if your response fails to resolve all the issues, you’ll receive a final office action, indicating that your trademark won’t be registered. At this point, you have the option to file an appeal with the Trademark Trial and Appeal Board (TTAB). If your appeal is successful, your trademark will be approved for publication.
For a more detailed explanation of the application process, check out our blog posts about these timelines:
Is your mark already in use in at least 2 states and/or between the US & another country? The Use in Commerce Trademark post is for you.
If you’re not yet in business or only operating in 1 state, the Intent to Use Trademark post is what you’ll want to read.
But here’s the catch: not all trademark refusals can be easily fixed. If the issues are minor, the examining attorney might reach out to you via email or phone to discuss them. However, if you don’t respond within the stipulated time or your TTAB appeal doesn’t succeed, your application will be considered abandoned. But don’t lose hope just yet! You might have the chance to revive your application if the abandonment was unintentional.
The USPTO will notify you of your application’s abandonment by sending a Notice of Abandonment. To revive your application, file a petition no later than two months after receiving the Notice of Abandonment. If you didn’t receive the notice, you can file the petition within two months of learning about the abandonment, but no later than six months after the abandonment date in TSDR (Trademark Status and Document Retrieval).
Trademark Refusal - #1, Likelihood of Confusion
The USPTO conducts a search for conflicting marks (Federal only though! And it can take MONTHS to get to this point meaning lost time & money for your business if the PTO does refuse your trademark) during the official examination, which happens after you’ve submitted your application. The examining attorney checks USPTO records to determine whether your mark conflicts with an existing registered or pending trademark.
Several factors come into play when making this decision, including the similarity between the marks and the commercial relationship between the goods or services they represent. A conflict isn’t dependent on the marks and goods or services being identical – it’s enough if they’re similar enough to potentially confuse consumers into thinking they come from the same source.
This is precisely why conducting comprehensive trademark research is critical. A thorough search should uncover any potential conflicts, considering factors like Sound, Appearance, and Meaning. Don’t forget to consider the industry context as well; it’s not just about exact matches in goods and services.
When it comes to sound, even slight similarities can lead to a finding of likelihood of confusion. There’s no “correct” way to pronounce a mark because it’s impossible to predict how the public will say it. Therefore, the focus is on whether the marks sound similar enough to create confusion.
For instance, “ISHINE” and “ICE SHINE,” both related to floor finishing preparations, were deemed confusingly similar. Similarly, “CRESCO” for leather jackets and “KRESSCO” for hosiery were considered likely to cause confusion due to their sound resemblance.
Appearance is another critical factor. Even if marks differ slightly in appearance, they can still be confusingly similar. The test isn’t about whether the marks are identical but whether they create a likelihood of confusion among consumers.
For instance, “COMMCASH” and “COMMUNICASH” for identical banking services were considered confusingly similar in appearance. Likewise, “TRUCOOL” and “TURCOOL” were found to be confusingly similar when used in similar contexts.
Meaning or connotation plays a significant role in determining confusion. The focus is on the impression a mark leaves on the average consumer, who typically “retains a general, rather than specific,” idea of trademarks.
For instance, “HOPNOTIC” and “HPNOTIQ” could be seen as conveying the same idea and therefore considered confusingly similar.
However, even marks with identical sound and appearance may create different commercial impressions based on the goods or services they represent. For example, “PLAYERS” for men’s underwear and “PLAYERS” for shoes were considered unlikely to cause confusion because they implied different characteristics for different products.
Remember, it’s not just about the similarity of marks; it’s also about whether the goods or services they represent are related. If consumers are likely to assume (mistakenly) that they come from the same source, that’s a key factor in determining likelihood of confusion and just like that, a trademark refusal is on its way to you.
Some examples of related goods and/or services:
t-shirts and hats
banking services and mortgage lending services
t-shirts, jeans, dresses and online retail clothing store
Again, any trademark search company worth their weight will consider ALL of this for every trademark search. When you’re shopping around for trademark services, do not be shy – ask them if (1) they conduct comprehensive trademark research and (2) what that means. If the answer does not include looking for marks that are similar in Sound, Appearance, or Meaning then save your money and move on.
Trademark Refusal - #2, Merely Descriptive
Trademarks are categorized along a continuum, from highly distinctive to merely descriptive. Marks that fall into the latter category “immediately describe an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services.”
Similarly, if a term conveys an immediate idea of any aspect of the goods or services, even if it doesn’t describe all of their attributes, it’s still considered merely descriptive.
For example, “APPLE PIE” would be considered merely descriptive for potpourri because it immediately describes the fragrance.
No need for the examining attorney to play detective and prove that others have used the mark in question or that they absolutely need it. The real litmus test here is whether the mark immediately tells folks something about an “ingredient, quality, characteristic, feature, function, purpose, or use of the goods.”
Also, no need for the term to spill all the beans about every “purpose, function, characteristic, or feature” of a product. If it spills the beans on just “one significant function, attribute, or property,” that’s enough to make it merely descriptive and be issued a trademark refusal.
Oh, and speaking of terms being considered merely descriptive, here’s a fun twist: Sometimes, a term can earn that label if the services it identifies fall within a subset of services implied by the term itself. Take “REGISTRY OF MEDICAL PATHOLOGISTS” for instance. It described certain claimed services that were basically wrapped up within the primary service of providing a registry of medical pathologists. It even extended its reach to additional services that were like the trusty sidekicks, providing support, ancillary, or auxiliary functions to the main gig of the applicant’s registry services.
Trademark Refusal - #3, Deceptively Misdescriptive
Now, let’s dive into the world of deceptively misdescriptive marks. Here’s the deal: a mark earns this title when it pulls off a two-step act. First, it misdescribes the goods or services, and second, it convinces consumers to buy into the misrepresentation.
So, before a mark gets labeled as deceptively misdescriptive, the examining attorney puts on their detective hat. They’re on a mission to figure out if a term, as applied to certain goods or services, is misleading. If that term swiftly gives off the vibe of an “ingredient, quality, characteristic, function, feature, purpose, or use of the” goods or services, well, then it’s merely descriptive. But here’s the twist: if it does all that, but it’s telling a little white lie – something that’s plausible but ultimately false – that’s when it gets stamped as deceptively misdescriptive, and it’s a no-go for registration.
For instance, “THC Tea” would be deceptively misdescriptive if used for tea-based beverages that don’t actually contain THC (the psychoactive compound in cannabis). Similarly, “ESSENSIA” would be deceptively misdescriptive for wines not containing “essensia,” a rare type of Hungarian Tokay wine.
Trademark Refusal - #4, Primarily Geographically Descriptive
A mark is considered primarily geographically descriptive if its primary significance is a well-known geographic location, and consumers would likely believe that the goods or services come from that place.
Geographic locations encompass countries, cities, states, continents, regions, areas, streets, nicknames, abbreviations, or variants of names.
When we talk about geographic locations in trademarks, there are a few common categories to consider:
Regions: Think of those big, identifiable areas like the “Midwest” or “Mid-Atlantic.” Yep, they count as geographic locations.
Nicknames: Even nicknames for places, like “Big Apple” for New York or “Motown” for Detroit, fall into the same category. It doesn’t matter if they’re abbreviations or variations of the actual place names – if people are likely to see them as such, they’re treated just like the real deal.
Maps: And lastly, when we’re talking about maps or outlines of a geographic area, they get the same treatment as the actual place name, as long as people are likely to recognize them as such.
For instance, “MINNESOTA CIGAR COMPANY” would be primarily geographically descriptive for cigars, and “CAROLINA APPAREL” for retail clothing store services would be deemed primarily geographically descriptive due to the reference to the states of North Carolina and South Carolina.
Trademark Refusal - #5, Primarily Geographically Deceptively Misdescriptive
On the flip side of the geographically descriptive trademark refusal coin is marks that are refused for being primarily geographically deceptively misdescriptive. That’s a mouthful! So, what does it actually mean?
When does a mark get the boot for being primarily geographically deceptively misdescriptive?
- Primary Significance: First off, the mark should scream “geographic location” in a way that everyone knows. We’re talking about places that are common knowledge.
- Purchaser’s Belief: Next, we’re looking at whether people would see that mark and think, “Ah, these goods or services must come from that place.” It’s all about connecting the dots between what’s on the label and where it’s supposedly from.
- Real Origin: Here’s the twist – the goods or services don’t actually come from the place named in the mark.
- Material Misrepresentation: And last but not least, if this misrepresentation about the geographic origin is a significant factor in consumers’ decisions to buy, then we’ve got a problem.
How do we figure out if it’s a “generally known” geographic location?
We don’t need any obscure or far-off places here. If it’s a term that clearly points to a location that’s common knowledge, that’s enough.
But what if it’s not crystal clear if the goods or services really originate from that place?
Sometimes, the record is crystal clear that neither the applicant nor the goods/services have any ties to that place. Other times, it’s a bit hazy – maybe the applicant isn’t from that place, but we’re not sure if the goods/services come from there. So, after we’ve established that the mark screams “geographic location” and people are likely to think it’s where the goods or services come from, the examining attorney has to dig deeper. They’re looking at materiality – whether this known or possible misdescription in the mark would really affect a significant chunk of consumers when they’re deciding to buy those goods or use those services.
For instance, “THE VENICE COLLECTION” and “SAVE VENICE INC.,” would be considered primarily geographically deceptively misdescriptive if they were used for products that don’t originate in Venice, Italy, “a well-known center for the manufacture of glass, lace, art objects, jewelry, cotton, and silk textiles.” Similarly, “BAHIA” would be deceptive if used for cigars that don’t come from the Bahia province of Brazil, “where the evidence of record was ‘unequivocal’ that tobacco and cigars are important products in the Bahia region.”
Trademark Refusal - #6, Primarily Merely a Surname
A surname trademark refusal happens if the trademark’s primary significance to the public is as a surname (family name or last name). Determining this depends on how the public perceives the mark as a whole.
There’s no hard-and-fast rule for making this determination. It relies on various factors, including the rarity of the surname, any connection between the term and the applicant, the presence of other meanings for the term, its pronunciation, and whether its stylization creates a distinct commercial impression.
Here’s the scoop from the Trademark Trial and Appeal Board on how they figure out what folks think about a term’s primary significance:
- Rare Surnames: First, they check if the surname in question is something you don’t come across every day. If it’s a rare one, that’s worth noting.
- Connected to the Applicant: Next, they’re curious if the term happens to be the surname of anyone linked to the applicant. It’s all about connections.
- Other Meanings: They also investigate whether the term has any other recognized meanings aside from being a surname. Variety is the spice of life, after all.
- Surname Structure and Pronunciation: Then, they consider whether it sounds and looks like a surname. If it has that surname vibe, it could count.
- Distinctive Lettering: Last but not least, they look at the font and style of the lettering. If it’s unique enough to make a separate impression, it’s in the spotlight.
For example, “MILLER LAW GROUP” would be primarily merely a surname for legal services despite other meanings of the term “miller.” Similarly, “HAMILTON PHARMACEUTICALS” would be considered primarily merely a surname for pharmaceutical products.
Trademark Refusal - #7, Ornamentation
Lastly, marks are refused if they are merely decorative elements or part of the “dress” of the goods. In other words, if the mark doesn’t fulfill the primary trademark function of identifying and distinguishing the source of the goods or services, it won’t be eligible for registration.
When it comes to clothing, small designs or discrete wording can be perceived as trademarks when located in specific areas. However, larger designs or slogans displayed prominently, such as the front of a t-shirt, may not fulfill the trademark function.
For instance, “I LOVE YOU” on a bracelet is seen as ornamental because it doesn’t identify the source of the bracelet. “It does not identify and distinguish the source of the bracelet, especially where there is so much jewelry decorated with the term I LOVE YOU in the marketplace.” Similarly, the phrase “NO MORE RINOS!” conveys a political slogan rather than a source-identifying trademark.
Navigating the path to trademark registration can be challenging, but understanding these common reasons for trademark refusals can help you avoid potential pitfalls. A rock-solid trademark search, the kind that’s got your back, goes above and beyond. It doesn’t just scratch the surface; it dives deep to explore all the possible roadblocks the USPTO might throw your way.
– Likelihood of Confusion: Yep, that includes the SAM rule and a careful hunt for any resemblances in Sound, Appearance, or Meaning.
– Merely Descriptive Marks: Marks that are basically describing the goods or services they’re slapped on.
– Deceptively Misdescriptive Marks: Marks that might mislead folks with a plausible but false description.
– Primarily Geographically Descriptive Marks: Marks that make it seem like your stuff hails from a specific place.
– Primarily Geographically Deceptively Misdescriptive Marks: These are the tricky ones that lead folks to believe the goods or services come from a certain place when they don’t.
– Primarily Merely a Surname Marks: Marks that are basically someone’s last name.
– Ornamentation Marks: When marks are all about the bling and not much else.
Whether it’s a likelihood of confusion, descriptiveness, deceptive misdescriptiveness, geographic descriptiveness, deceptive geographic misdescriptiveness, surnames, or ornamentation, being informed and working with experienced trademark professionals can make all the difference in securing your trademark registration. So, stay diligent, conduct comprehensive research, and remember that each case is unique. With the right guidance, you can overcome these obstacles and protect your brand effectively.