Top Reasons the USPTO will Reject your Trademark
A trademark may be the most valuable commercial asset a company can have. It is a company’s branding, marketing tool, and identification mark. It carries the value of the company even when other intellectual property rights like patents have expired.
Most trademark applications filed with the United States Patent and Trademark Office (USPTO) do not become successful trademark registrations, however. Trademark applications undergo a series of reviews and examinations. During the USPTO examination process, there are well-established guidelines that must be followed right from the procedural to substantive aspects of the application. Procedural matters such as a technical error during a trademark application process can easily be rectified and rarely results in a refusal of a trademark. Substantial aspects of an application, on the other hand, play an important role in whether a trademark registration may be granted.
Lack of Distinctiveness
The most notable reason for refusing registration is the lack of distinctiveness. A trademark should be adapted to distinguish and capable of distinguishing your products or services from others. While it is the USPTO Examiner’s burden to prove a lack of distinctiveness, a trademark applicant must do its due diligence to ensure its mark is capable of being properly distinguished. This will save the applicant time and money. Some criteria that are taken into consideration when examining the distinctiveness of a mark are discussed below.
Use of Generic Terms
The USPTO will refuse mark registration if the mark has become a generic term for a general class of products or services. For example, the word “Aspirin” was held to be a generic term in 1897, where Bayer AG previously owned the trademark for the word “Aspirin.” Usually genericization of a term occurs because of the popularity or significance a term acquires. A trademark is said to become generic when it loses its identity as a distinctive product identifier. Generic terms are essentially umbrella terms that communicate to consumers what is being offered instead of who is making the offer, and for that reason, they lack distinctiveness. For instance, it would be difficult to trademark the term “coffee” to sell coffee.
Use of Descriptive Marks
A mere description of a product, its features, characteristics, or purpose fails to show the distinctive nature of the mark required for trademark registration. A descriptive mark is a word that merely describes a product or its parts, use, characteristics, function, purposes, quality, or feature. For instance, a descriptive mark is “hot coffee” for coffee. Marks of this type are generally not granted trademark protection.
Offensive Marks
Offensive, immoral, deceptive, or scandalous words may not be granted federal registration. Remember, trademarks are widely used in marketing and advertisement and for such reason, the promotion of offensive marks may not be permitted by law. Although there is room to make argument for the right to free speech, federal law currently states that a trademark registration may refused if it consists of or comprises 1) immoral, deceptive, or scandalous matter or 2) matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.
Official Signs and Symbols
There is a strict prohibition against the registration of national, foreign, and international signs, flags, emblems, bearings, or monuments as trademarks. The rationale behind this is that it creates the likelihood of confusion that the product or service is offered by the government or a government agency.
Geographical Indications
Registration of geographical indication or designations as a trademark may not permissible as it fails to maintain that distinctive character needed to identify trademarks. An example of a geographical indication is, “Colombian Coffee.” The example here uses both a generic term and an affiliation of origin.
Prior Trademarks
A trademark applicant must be careful not to apply for a trademark that is already held by another registrant in a prior trademark registration for a similar category of products and/or services.
The rationale is that using a prior trademark creates a likelihood of confusion between an applicant’s goods or services and a prior registrant’s goods and services. The consequence of which may be heavy monetary reimbursement for losses suffered by a prior registrant. A trademark applicant may be able to resolve matters of prior trademark registrations by use of consent or concurrent agreement with a prior registrant, which permits an applicant to make use of the mark consensually and to avoid litigation.
It is important to work with an attorney to conduct a thorough trademark search prior to submitting an application to avoid conflict with prior trademark registrations.
Considerations
To maximize chances of a successful trademark registration, create a strong mark that avoids the pitfalls discussed above. Do thorough research to ensure that there are no existing conflicts that may arise. The complexities of filing a trademark application are best handled by hiring a trademark attorney. It may cost more to fix an erroneous application, refile an application, or defend a trademark infringement case than it would the cost of hiring an attorney.
If you are looking for a trademark lawyer to help you prepare and submit a trademark application, schedule a discovery call with the Antares Law Firm today.
