Trademark prosecution refers to the process of obtaining a federal trademark registration and the related work that occurs between trademark attorneys representing trademark applicants, on one hand, and United States Patent and Trademark Office (USPTO) trademark examiners, representing the government, on the other.
Because trademark application is a legal process and applications must meet many legal requirements in order to register, there are many reasons why applications may be rejected during trademark prosecution. Brand Registry Trademark understands trademark rules and laws and has extensive trademark prosecution experience. We can prevent or overcome rejections and attendant delays in the trademark application process.
Why are trademark applications rejected by the USPTO?
Below are some of the most common reasons that trademark applications are rejected at the USPTO:
Likelihood of confusion
Among other tasks, USPTO trademark examining attorneys conduct a search of USPTO records to determine whether there is a conflict between a mark in a trademark application and a mark that is either registered or pending at the USPTO. Many legal factors affect whether there is a likelihood of confusion between marks (see Trademark Clearance Searching and Opinions page and du Pont factors). The most frequent factors considered in reaching decisions regarding likelihood of confusion are: (1) the similarity of the marks; and (2) the commercial relationship between the goods and services under the marks (as they are set forth in the trademark application).
To find a conflict, the marks and the goods/services do not need to be exactly the same; instead, it is enough if the marks are similar and the goods and/or services related in an way where consumers would mistakenly believe they come from the same source. Similarity in sound, appearance, or meaning may be enough to support a finding of likelihood of confusion. If two marks are found to be confusingly similar, a likelihood of confusion will exist if the goods and/or services upon which or in connection with the marks are used are related. As with mark similarity, goods and/or services do not have to be identical to be related. It is enough that they are related in a way where consumers are likely to assume (mistakenly) that they come from a common source. If there is a conflict between the applicant’s trademark and a registered trademark, the USPTO examining attorney will refuse registration of the applicant’s trademark for likelihood of confusion.
Because the existence of a mark that is confusingly similar to yours and that is used with related goods and/or services may bar registration of your mark, it is critical that a trademark clearance search and analysis be conducted by an experienced trademark attorney before filing.
To complete trademark registration, a trademark applicant must submit acceptable commercial specimens showing use of the applied-for mark in commerce. These specimens are carefully examined by the USPTO. An application is rejected if the specimens do not meet requirements. Specimen rejections may issue for many different reasons including:
- the specimen does not properly show the trademark;
- the specimen does not show trademark use with the goods and/or services set out in the trademark application;
- the specimen does not show your own use of the trademark;
- the specimen does not show actual use in commerce (as that is defined by trademark law); or
- the specimen is not the adequate type of specimen for your particular goods or services.
Merely descriptive or generic
A USPTO examining attorney will refuse registration of a mark as merely descriptive if it immediately describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services or if the mark is too generic. See the Trademark Selection page for examples of descriptive and generic marks.
Misidentification of goods
A trademark application must specify the particular goods and/or services on or in connection with which the trademark applicant uses, or has a bona fide intention to use, the mark in commerce. Requirements to describe the goods are sufficiently exacting that the USPTO has created preapproved language for most goods and/or services. If an applicant does not properly specify the goods and/or services in the application, the application may be refused.
Contact Brand Registry trademark today to have experienced trademark attorneys help you in trademark prosecution, including evaluating and overcoming tough USPTO office action rejections.