Part 5 – Trademark Application Refusal

A USPTO (United States Patent and Trademark Office) trademark application refusal is a decision made by the USPTO to deny registration of a trademark based on one or more specific grounds set forth in the Trademark Act. A “Trademark application refusal” is simply a generic term used in connection with an Office Action issued by the USPTO examining attorney. Not all Office Actions are identical as there are many grounds the examining attorney may cite in refusing to allow a trademark application to proceed to a full trademark registration.

The most common reasons for a USPTO trademark application refusal include:

  • Likelihood of confusion with an existing registered trademark or pending application.
  • The mark is descriptive or merely a surname.
  • The mark is too similar to a previously registered or pending mark.
  • The mark is functional.
  • The mark is scandalous or disparaging.
  • The mark is primarily a government insignia or flag.
  • The mark is not in use in commerce at the time of the application.
  • The applicant does not have a bona fide intent to use the mark in commerce.
  • The mark is not registrable because it is an immoral or scandalous matter.

If an applicant receives a refusal, they can respond to the refusal by providing additional evidence or arguments to overcome the grounds for refusal, or by making changes to the mark or the goods/services associated with it.

Section 2(D) “Likelihood of Confusion” Refusal

As part of the official examination of a trademark application, the USPTO examining attorney will conduct a trademark search for conflicting marks. The USPTO examining attorney will issue an Office Action based on “likelihood of confusion” if he or she believes that the trademark conflicts with a registered trademark or a trademark that is pending with the USPTO. The Office Action will refer to the registered or pending trademark and state that the proposed trademark “resembles” the registered or pending trademark and it is probable that consumers would be confused, mistaken or deceived as to the source of the goods and/or services of the applicant and registrant if both trademarks existed in the same or similar marketplaces. The principal factors considered in reaching this decision are the similarity of the marks and the commercial relationship between the goods and services identified by the marks. Typically, likelihood of confusion will be found if the trademarks are similar and the goods and services are related so that consumers would mistakenly believe that the goods and services come from the same source. Put another way, if both trademarks existed in the marketplace, a reasonable, average consumer may buy your product or services believing they were buying the product or service of the trademark registrant and vice versa.

If the USPTO examining attorney finds that a likelihood of confusion may exist with an earlier filed, but not yet registered trademark, the examining attorney will suspend action on the trademark application pending final resolution of the earlier-filed pending trademark. If the earlier-filed pending trademark turns into an official federal trademark registration, the examining attorney will issue an Office Action for the later-filed trademark application on a likelihood of confusion basis.

Trademark Specimen Refusal

A “specimen” is a sample of your trademark as used in commerce. It is real-life evidence of how you are actually using your trademark in the marketplace with the goods and/or services described in your application. A trademark registration will not be granted until the applicant files a verified statement, together with specimens of use, that it has used the trademark in commerce. During the trademark renewal process, specimens of use of the trademark must also accompany the Section 8 declaration required between the fifth year and sixth year after registration and with the renewal of the registration every 10 years. The specimen is typically a photograph, scanned copy, screen capture, or printout of the physical specimen of trademark use.

The good and/or services specified in the trademark application must match the goods and/or services shown in the specimen. If they do not, then the USPTO examining attorney will issue an Office Action refusing the trademark application. Other problems arise when the specimen looks different from the trademark submitted in the trademark application; the specimen is digitally altered image that is not actually used with the good or services described in the trademark application or in the marketplace; the specimen is not the appropriate type to show use in commerce in connection with the goods or services described in the trademark application or the specimen is not associated with the goods or services as described in the trademark application.

Section 2(E)(1) “Descriptiveness” Refusal

The USPTO examining attorney will refuse registration of a trademark as merely descriptive if it immediately describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services with which the trademark is used. It should be noted that a term to be used as a trademark is “descriptive” if it directly describes any of the goods or services described in the trademark application. A term need only describe a single, significant quality or feature of the goods or services to be found descriptive. A Section 2(e)(1) refusal is made when an examining attorney finds evidence showing the terms used in your trademark merely describe some aspect of your goods or services. For example, the terms “epoxy” used with surfboards, or “neoprene” used with wetsuits would be merely descriptive. These descriptive terms cannot be trademarked because businesses and competitors in the marketplace need to be free to use descriptive language when characterizing their own goods or services to the public without the threat of a lawsuit for trademark infringement.

Section 2(E)(4) “Surname” Refusal

A surname is your family name or last name. The USPTO examining attorney will issue a surname refusal if he or she believes your trademark is primarily merely a surname. To register a surname, the applicant must show acquired distinctiveness or secondary meaning. Exclusive rights in a surname cannot be established without evidence of long and exclusive use that changes its meaning to the public from that of a surname to that of a trademark for particular goods or services. Examples of surnames that have become registered trademarks include: Del Monte, McDonald’s, Kellogg’s, Disney, and Spiegel.

Section 1, 2, And 45 “Ornamental” Refusal

A USPTO examining attorney will issue an ornamental refusal if the evidence you provide showing how the applied-for trademark (the “specimen”) is used is only an ornamental or decorative feature on the goods and not as a trademark to indicate the source of the goods. For example, larger letters, designs or slogans if displayed across the front of a shirt or hat are merely ornamentation and do not serve the trademark function of identifying and distinguishing the applicant’s goods from those of others. With respect to clothing, consumers may recognize small designs or discrete wording as trademarks, rather than as merely ornamental features, when located, for example, on the pocket or breast area of a shirt.

If you are have received, or you are concerned that you may receive, a trademark application refusal, please contact us. Our trademark attorneys can assist!

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