when trademark attorney is arbitrarily rejecting application

by Dane Lehner 7 min read

Why was my trademark application rejected?

The USPTO may be required to refuse registration of your mark on numerous grounds. The most common are: Likelihood of Confusion: The USPTO conducts a search for conflicting marks as part of the official examination of an application only after a trademark application is filed. In evaluating an application, the examining attorney conducts a search of USPTO records to …

What is the likelihood of confusion when filing a trademark application?

If you are filing a trademark application and are not 100% sure you are filing it correctly you should hire a trademark attorney. Otherwise, you can lose your government filing fee, submit an application that gets rejected via an Office action or worse, file an application that gets noticed by the actual trademark owner, who then notifies you to cease and desist or sues you for …

How does the examining attorney review a new trademark application?

Dec 22, 2017 · If the TTAB issues a final decision to reject a trademark application, there is only one remaining option for recourse. The applicant must file an appeal with the United States Court of Appeals for the Federal Circuit. The trademark dispute leaves the domain of the USPTO and enters the domain of the federal court system.

Why should I hire a trademark attorney?

Jan 26, 2016 · Unfortunately the U.S. Patent and Trademark Office denies a lot of applications. Sometimes the denial is a simple formality, other times it is more challenging. When the office denies an application it will issue an “Office Action” which is simply a rejection letter explaining the office’s reasoning for the denial.

What happens if my trademark application is rejected?

If your trademark has been refused by the USPTO, you can still use it in the marketplace. However, if it was refused because the government considered it to be too similar to another mark, then it's important to study the judgement carefully before continuing to use the trademark in commerce.

What can you do if an examining attorney refuses your federal trademark application but you disagree with the refusal and want to get a registration?

If your response does not overcome all objections, the examining attorney will issue a final refusal office action. If you disagree with the final refusal, you may, for an additional fee, appeal the decision to the TTAB.Jan 4, 2019

Can a trademark application be denied?

The USPTO may be required to refuse registration of your mark on numerous grounds. The most common are: Likelihood of Confusion: The USPTO conducts a search for conflicting marks as part of the official examination of an application only after a trademark application is filed.Jul 11, 2016

What percentage of trademark applications are rejected?

Absolutely. According to the USPTO, approximately 18% of applications failed during first action in 2016. When you think about it, that number is quite shocking. It means nearly 1-in-5 trademark applications were refused.Mar 16, 2017

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

Likelihood of confusion is the most common reason an application will be rejected by the USPTO. Essentially, if there is a high probability that the general public will confuse your trademark with someone else's (already existing) trademark, your registration will not be granted.Aug 23, 2017

Do you get money back if trademark is declined?

Will the Trademark Office refund the government fees if my trademark is refused? Unfortunately the government fees for a trademark filing are never refundable. When a trademark application is filed, the government fees are paid. Once they are paid, they are not refunded for any reason.May 5, 2019

What makes a trademark invalid?

Generally, there are four reasons invalidation of a registered extension of protection to the United States may occur: (1) cancellation proceedings instituted by a third party before the Trademark Trial and Appeal Board; (2) order of a federal court of the United States; (3) failure to file an acceptable §71 affidavit ...

How do you overcome a trademark rejection?

To overcome a §2(e)(1) refusal (i.e., a descriptiveness refusal), a trademark applicant can either (1) submit arguments and evidence to show that the mark is distinct, (2) amend the application to seek registration on the Supplemental Register, or (3) demonstrate that the mark has acquired distinctiveness.Aug 25, 2020

How can I stop rejection?

10 Ways to Avoid RejectionMake your request one that the other person can perform. ... Be sure your request is clear. ... Keep it short and sweet. ... Don't leave out anything important. ... Keep it relevant. ... Provide a compelling rationale. ... Use the right language (and body language). ... Don't overshare.More items...•Nov 4, 2014

What is a trademark secret?

A trade secret: is information that has either actual or potential independent economic value by virtue of not being generally known, has value to others who cannot legitimately obtain the information, and.Feb 7, 2019

Why is my trademark not registered?

Common reasons for trademark registration refusal include a likelihood of confusion or descriptiveness. Trademark registration in the U.S. can be a tricky thing. For one thing, unlike in most countries, trademark registration here is not actually a requirement to enjoying rights in the mark—that is, you have some rights in the mark ...

When was the Redskins trademark canceled?

When, in 2014, the USPTO canceled the registration of the “Redskins” mark—and then again in July, 2015, when a federal judge affirmed the cancellation—everyone in the U.S. was suddenly exposed to this fundamental trademark doctrine. (There, it was “cancellation,” and not “refusal,” because the registration had already been granted.

What is merely descriptive mark?

A “merely descriptive” mark is one that simply identifies a quality, function, or characteristic of the service/product.

Descriptiveness

Another common reason applications are denied involve the inability to register a mark that is descriptive. When an application is rejected for this reason it can be very difficult to overcome the rejection.

Likelihood of Confusion

Another complicated rejection is likelihood of confusion with a prior registration. When an examiner reviews your application, he or she will search for prior registrations. If your mark is likely to cause consumer confusion with a prior application, you will get an Office Action.

Be Proactive

The good news is many of these issues can be avoided or at least mitigated to some degree with proper due diligence before submitting an application. You should always perform a trademark search before submitting your application and it is often a best practice to seek legal counsel to assist with your application.

What is confusingly similar rejection?

A confusingly similar rejection is made in an office action on your trademark application when the trademark examiner believes that there is a likelihood of confusion between your trademark and the mark of another. In making this determination , the examiner will consider both the similarities of the marks and the goods and services on which the marks are to be used.

What are Dupont factors?

The DuPont factors are taken together as a whole and are not equally weighted, but of paramount significance is the similarity of the marks in terms of their appearance , sound, connotation, and commercial impression as well as the relatedness of the goods and services associated with the marks.

What can an attorney do for a trademark?

Attorneys can provide crucial legal advice. An attorney who is licensed to practice law in the U.S. and experienced in trademark law can advise you about many important legal issues. These include: Determining if your chosen trademark can be legally protected.

What are legal services?

Many private companies offer legal services, such as assistance with filings or responding to an office action, or other services. Such services may be legitimate if provided under the supervision of a licensed U.S. attorney.

Likelihood of Confusion

  • Likelihood of confusion is the most common reason an application will be rejected by the USPTO. Essentially, if there is a high probability that the general public will confuse your trademark with someone else’s (already existing) trademark, your registration will not be granted. The two marks need not be identical. For instance, if you start up a ...
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Merely Descriptive and Deceptively Misdescriptive

  • The first two—“merely descriptive” and “deceptively misdescriptive”—are lumped together even in the Lanham Act. A “merely descriptive” mark is one that simply identifies a quality, function, or characteristic of the service/product. For example, if you sell chairs under the trade name “Sturdy.” A deceptively misdescriptive mark, meanwhile, is one where the mark misdescribesa quality, fun…
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Geographically Descriptive and Geographically Deceptively Misdescriptive

  • On the face, these two are very similar to the ones in the previous entry. If your mark is “geographically descriptive,” that means it primarily indicates (accurately) the geographic region of origin of the product (or service). For example, “Wisconsin Cheese” for cheese made in Wisconsin. If your mark is “geographically deceptively misdescriptive,” that means it primarily fal…
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Scandalous, Disparaging, and Immoral

  • These grounds for refusal have been in the news more and more for the last few years thanks to the NFL football team located in Washington, D.C. When, in 2014, the USPTO canceled the registration of the “Redskins” mark—and then again in July, 2015, when a federal judge affirmedthe cancellation—everyone in the U.S. was suddenly exposed to this fundamental trade…
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Ornamentation

  • Generally, if the applied-for mark is merely a decoration, then it will be refused. This is most often an issue for designers. For example, if American Eagle wanted to adorn one of its shirt designs with a decorative “44,” and then try to register that as a trademark that only American Eagle can use, the USPTO would likely refuse, because that is just ornamentation. It is not “the point” of th…
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Surname

  • If the “primary significance” of the mark to the purchasing public is merely a surname, registration will be refused. Phrased otherwise, if the public associates your last name with the mark, as opposed to associating your last name with the product, you won’t get the registration. This distinction allows for the big names out there—McDonald’s, Ford, Abercrombie—to legally enjoy t…
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Some Others

  • There are plenty of other reasons why a mark might be refused registration. Your mark can’t be the flag (U.S., state, or other country); it can’t be the name, portrait, or signature of a living person (or deceased U.S. president), at least without their consent; it can’t falsely suggest a connection with a person (alive ordead), institution, or belief; nor can a valid trademark be “functional.” The s…
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