Archives For trademark denial

Our last post provided a solid recap of trademark law and provided links to various blog posts we’ve written over the last year with respect to trademark law.

This week, we want to do another roundup. This time though we will focus on trademark applications and how to get your mark protected by the United States Patent and Trademark Office!

First, you should always perform a trademark search.

In order to obtain a federal trademark registration you have to certify that you have the right to the mark for which you seek protection. The USPTO will also search its database to see if there are any conflicting marks.

To help, it is always a good idea to perform a trademark search. You can read more about that in this post, How to Perform a Trademark Search, and lean why an attorney can is helpful with searches in this post, The Benefits of Using an Attorney to Conduct a Trademark Search.

Second, sometimes you need a trademark attorney, sometimes you don’t.

Once your search is complete and you are ready to apply, you have a lot of options.

Many times you need an attorney, but other times you don’t. We covered that in our post Do I Need an Attorney to Trademark My Business Name.

If you want to talk with an attorney, we also have tips on How to Find & Hire a Trademark Attorney.

Third, how to file a trademark application.

Now you are ready to file your application.

If you are going it alone, you should check out this post, How to File a Trademark Application Without an Attorney.

You should read that post even if you are using an attorney because it will help you understand the process.

In the process, you’ll have to submit a specimen of use. This provides the USPTO with evidence that you are actually using the mark in commerce. You can learn more about this in our post How to Find a Good Trademark Specimen.

Fourth, what to do if your mark is denied.

Lastly, remember that many applications are denied. You might be denied for failure to submit a good specimen, or perhaps you checked a wrong box. Other common reasons include the descriptive nature of your mark and also possible confusion with other existing registrations.

Regardless, you should read our post What You Should Do if Your Trademark Application is Denied to learn about what to do next.

As we said in our last post, we are excited to continue covering trademark law and offering innovative trademarking services online. If you want to seek trademark protection for your mark, please check out our website, MightyMarks.com to learn more!


*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.

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. In this post we will cover some common reasons for a denial and what you can do to fix them.

Don’t Ignore the Office Action

The first thing to consider is the timing of the rejection. As soon as you receive an Office Action, you should place multiple notes on your calendar. The office will require a response within six months so you should place that date, as well as a couple reminder dates, on your calendar. If you fail to respond on time, you will lose your application.

Deficiencies; Disclaimers; Specimens

Many applications are denied for simple administrative type issues. Luckily, these are usually easy to fix, but not always. One example is a rejection due to confusion over who the applicant is. You should make sure it is clear whether you, or a registered business entity, is the owner/applicant.

Another example is when you’ve included a word that you may not protect. For example, in our example about Evan’s Coffee Shop, the USPTO would likely require the application to disclaim “Coffee Shop” because you can’t protect a descriptive term. However, you could still claim ownership of “Evan.”

Lastly, your specimens might be insufficient. You must submit specimens of use that clearly show the mark as it is connected to you, the source of the good or service. Specimen submissions can be tricky and we will cover that in a later post.

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. You will have to submit a document similar to a legal brief, hopefully including citations to case law, that explains your argument as to why the mark is not descriptive. This can be complex and you should seek legal counsel for these types of rejections.

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.

Again, you will likely need to submit a brief arguing why you believe consumer confusion is not likely. Perhaps the goods and services are sufficiently different, or perhaps the examiner’s conclusion is unreasonable. Regardless, this brief can be complex and this is another type of rejection for which an attorney’s assistance can prove important.

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.

That’s where we come in. We’ve filed a lot of applications and would be happy to assist you. Contact us today to learn about your trademark rights!

Image: Thinkstock/Aquir

*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.