Getting your trademark in the USA is not a cakewalk. The process includes various stages through which a trademark needs to pass through. Moreover, even after all these stages, there are chances of getting a trademark registration rejection by USPTO. But it is possible to minimize the reasons due to which a trademark registration application may get rejected by USPTO. But why USPTO rejects trademark registration?
USPTO, the trademark registration office, follows rules to evaluate trademark applications and give approval or disapproval. In this article, we will focus on common reasons for the refusal of trademark registration in the USA. Along with common rejection grounds, this article also covers various ways to avoid trademark rejection due to the likelihood of confusion.
Why USPTO rejects trademark registration?
There are several possible grounds for which USPTO rejects trademark registration, which include:
- The trademark is merely descriptive.
- Likelihood of Confusion with an existing registered trademark
- The trademark is deceptively misdescriptive
- The trademark is primarily merely a surname
Likelihood of Confusion with an existing registered trademark.
The likelihood of confusion is the most common reason why USPTO rejects trademark registration. After the trademark filing at USPTO, an examiner analyzes and reviews the applicant’s trademark and its field of use meaning the category of goods and services for the use of that trademark. Along with a thorough review, the trademark examiner compares the mark with the existing registered trademarks in similar and relevant domains of use. If the applicant’s trademark is confusingly similar to an existing registered trademark, then the trademark examiner will issue a refusal.
A trademark examiner can reject a trademark application based on the likelihood of confusion in the following scenarios:
- The two trademarks are similar-sounding
- The two trademarks are similar in appearance
- Trademarks that have a closely similar meaning
- Misspellings of a registered trademark
- Phonetic equivalents of an existing registered trademark
- Unique stylization of a registered trademark
Read Also: A to Z of Trademark Classes
What is Likelihood of Confusion?
Let us understand this with an example, Suppose you apply for a trademark “Starbucks,” or “Stambucks” for a café, the general public may get confused between these two as there is already a trademark name “Starbucks”. In such a case, it is most likely that USPTO will refuse the application even if the trademark logo is different from the already existing mark.
Moreover, the examiner compares the applicant’s trademark to pending trademarks along with existing trademarks. One important point that you must know here is that USPTO refuses applicants’ trademarks only if they are similar to a registered trademark. If the applicant’s trademark is similar to an already filed pending trademark, the USPTO notifies the applicant of such existence of such a pending trademark application.
Also, a similar commercial impression in consumers’ minds is also a major reason behind the likelihood of confusion, i.e., consumers may confuse between the two marks. The reason behind this confusion is the similar impression of existing and applicant’s trademark. Here, one requirement for USPTO to refuse such a mark is that both these trademarks must belong to related goods and services and thus have a similar customer base. For example, the trademark GUCCI for sunglasses and GUCCI for bikes will not come under likelihood and confusion. This is because their goods and target customer base are different.
The Trademark is Merely Descriptive
A trademark is merely descriptive if it immediately gives the knowledge of the product’s ingredients, qualities, and key characteristics of the goods and services. This is because a trademark should be suggestive in nature, and thus registerable. Thus if the trademark describes only features, functions, ingredients, or aims, it is not distinctive enough to be registered.
If your trademark application is rejected based on this ground, you can overcome this by refusal under this ground can be overcome by well-framed arguments. Such arguments should state the multi-step reasoning to associate the trademark with the goods or services.
The Trademark is Deceptively Mis-descriptive
In this case, USPTO refuses the applicant’s trademark registration if it deceptively misdescribes a function, ingredient, feature, characteristic, etc., of goods and services. This means that such trademarks generally give inaccurate information that customers may perceive to be true. Therefore, USPTO does not allow to deceive consumers into believing that specific good or service is something that it is not. For example, selling furniture under the trademark “Real Oak” unless the furniture is truly made of oak is “deceptively misdescriptive.” Moreover, if you intend to sell true oak furniture under the name “Real Oak”, USPTO considers such trademark name to be merely descriptive.
However, USPTO’s deceptively misdescriptive trademark can be registered only if there is a representation of secondary meaning.
The Trademark is a Surname
If the prime significance of the trademark to the customers is just a surname, USPTO generally refused the trademark registration. Therefore, if the customers link your last name with the mark instead of the product, USPTO refuses the registration.
Now the question is, if one cannot associate a surname with the trademark, then how does Ford, McDonald’s, Dell, Disney, Del Monte, etc., are registered trademarks. Well, the explanation is that the surname should be associated with the product of an established brand first. If so, the applicant for such a mark can prove secondary meaning. However, if the customers consider the trademark merely a reference to a surname, then USPTO refuses its registration.
- If you put two surnames in a combination, the trademark examiner generally allows its registration. Moreover, if the surname is one of its kind, USPTO may permit its registration as a trademark.
- For a common surname to get a trademark registration, the applicant needs to prove its secondary meaning. This second meaning generally develops due to trademark’s association with the product or service.
How to Avoid Trademark Refusal due to Likelihood of Confusion
If you are afraid of your trademark application getting a rejection due to the likelihood of confusion, then it is safe to conduct a trademark search. A trademark search is a comprehensive search process to check the availability of that particular trademark. USPTO rejects trademarks based on their similarity with similar trademarks, i.e., likelihood of confusion. Therefore, a holistic trademark search eliminates the chances of rejection by the trademark examiner. Moreover, TM search also enables you to examine similar trademark applications that are pending.
Read Also: How to Perform a Trademark Clearance Search?
We at TMReady work with a mission to ensure that we provide a comprehensive trademark search for your trademark. Our trademark search reports help you to identify the future risks of litigations that may arise due to trademark infringement. In addition, we make sure that there are fewer possibilities of trademark rejection based on the likelihood of confusion. Our team of TM Search professionals is fluent with updated search software and tools. So you can choose TMReady for all your trademark search-related needs. Got more questions? Visit us and get the answers.
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