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Common Trademark Refusals

by | May 17, 2018 | Trademark topics, IP points | 0 comments

While there are many reasons why applications may be refused for registration by the United States Patent and Trademark Office (USPTO), below is a summary of the most common issues raised by the Office:

  1. Identification of Goods/Services

The most common rejection arises from the language used to describe an applicant’s goods and services. The USPTO requires a certain level of specificity in the description, the “identification,” in order to avoid awarding overly broad trademark rights. This prerequisite creates a tension between the applicant’s objective, to obtain the broadest scope of protection, and the USPTO requirement that the description not be vague or indefinite. Identification objections are relatively simple to address, but it is key to remember that you can only narrow the scope of the identification after applying, and cannot add additional goods or services. Therefore, if there is better to initially ensure that the identification describes all your products in the application and address any necessary revisions later.

  1. Descriptiveness

Another common rejection occurs when the USPTO considers the applied-for mark merely descriptive, meaning that the mark itself conveys a feature, characteristic, an ingredient, quality, function, purpose, or use of the relevant goods or services. This rejection takes into account the applied-for mark in relation to the identification (discussed above). The rationale behind this rejection is to prevent awarding exclusive rights in descriptive terms/phrases that others need to use to accurately describe their own products. Back in 2014, Evoke Law wrote about choosing a distinctive, non-descriptive mark (https://www.evoke.law/the-distinguished-mark-stronger-in-court/).

Descriptive marks are appealing because such marks immediately convey to the customer what the product or service is, lessening the marketing communications challenge. Unfortunately, descriptive marks are not protectable absent secondary meaning (5+ years of continuous use, or an extensive history marketing, advertising, promotion, and sales, etc.). Additionally, selecting or incorporating a geographic location in a mark can also be tricky. A mark consisting of a geographic designator can be considered merely descriptive (if product comes from that locale), deceptively misdescriptive (if the product does not come from that locale when consumers are likely to think it does), or arbitrary (when mark does not convey immediate or readily recognizable geographical significance to the average consumer).

Strong marks, marks that are fanciful, arbitrary, or suggestive, more readily provide businesses with exclusivity of ownership and the ability to control use of the mark in the marketplace. That said, a strong mark can initially require a sizable marketing budget; the less inherent meaning a mark has, the more meaning that must be created through advertising and promotion.

Responding to an alleged “merely descriptiveness” refusal can be slow, result in additional costs, and present a level of insecurity as to whether the allegedly descriptive mark is even registrable.

  1. Prior Filed Application/Likelihood of Confusion

Another common reason applications get rejected is that the USPTO has identified an issued registration or an earlier filed application for the same or a similar mark for identical or related goods. Responding to an alleged “Likelihood of Confusion” refusal can be time-consuming, expensive, and create great uncertainty. Significantly, it is important to recognize that the marks and products need not be identical to create a likelihood of confusion. The average consumer is recognized as having an imperfect memory and differences that you may think are meaningful may not be significant under trademark law. The reasoning behind this rejection is that consumers need to rely on a mark to identify an exclusive source for the product they seek and two confusingly similar marks used for related products cannot coexist in the marketplace.

Another complication is that a trademark owner in the U.S. can acquire trademark rights simply through using a mark, without ever registering it. These common law (unregistered) rights can trump someone else’s applied-for or even a registered mark, if they are the “senior” user. Many “junior” users have been stopped dead in their tracks by a common law trademark owner who initiates a challenge based on their common law priority. However, common law rights are restricted to the geographic area in which the product/service is sold under a given mark. That said, with the Internet as a common primary means of marketing, the geographic area for a common law mark can easily be nationwide.

Thorough clearance can minimize the risk of receiving this type of refusal. We recently wrote a post on the importance of clearance.

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