What Are Some Reasons the USPTO Trademark Office Might Refuse My Trademark Application? 

Securing a trademark for your brand is an exciting milestone. It symbolizes growth, identity, and the foundation for protecting your business assets. However, not all applications sail smoothly through the United States Patent and Trademark Office (USPTO). Many trademarks are refused for a variety of reasons. Statistically, less than 50% of applications that are "self-filed" (ie. DIY, without an attorney) make it past the examination phase without encountering a refusal.  While an Office Action refusal can be overcome, very often those who self-file without attorney assistance don't know how to try to overcome the refusal.  Often, they do not even understand the refusal. 

If your trademark application faces refusal, don't panic. Understanding the most common refusal reasons and knowing how to address them can help you turn the situation around.

Common USPTO Trademark Refusal Reasons

Below, we explore some of the most frequent reasons the USPTO may refuse a trademark application and provide insights into what they mean.  First of all, it is important to understand the process.  After you submit your application, it is examined by a USPTO Examiner, who may issue what is called a "Non-Final Office Action Refusal."  A non-final Office Action will identify any problems (or grounds of refusal) and permit you 3 months to submit a correction (in the case of a non-substantive refusal) or arguments to overcome the refusal (it it is a substantive ground).  You can seek one 3-month extension (for a filing fee).  If you fail to respond to a non-final Office Action refusal, your application will fail and be abandoned.  Likewise, if your response is not satisfactory, the Examiner will issue a Final Office Action Refusal.  At that time you have another 3-month period to either seek reconsideration from the Examiner, or appeal to the TTAB (and pay a fee for an appeal).  

Understanding the various grounds for an Office Action Refusal is thus very important.  Here are some of the most common.

Likelihood of Confusion under Section 2(d) of the Act

The USPTO may reject a trademark if there is a "likelihood of confusion" with an existing trademark. This means that your mark is considered too similar to another registered mark or pending application in terms of appearance, sound, meaning, or overall impression.  This is something that is considered a substantive refusal ground, in that if you do not provide sufficient argument or evidence to overcome it, this refusal is fatal for your application.  A conflict need not be identical to your trademark (neither in appearance nor in the goods/services) in order to be raised as a likelihood of confusion ground.  The USPTO looks at anything similar, and likely to be confused by the consumer, in the same, similar or related goods/services.  

How to Address This

To respond to a likelihood of confusion refusal, you have a few options, which will depend on the circumstances.

• Submit legal arguments and/or evidence that seek to convince the examiner that there is no likelihood of confusion (in essence, get the Examiner to reconsider their mistaken assumption of a conflict)
• Delete overlapping goods/services to try and overcome the refusal

Either one of the above methods is best undertaken with an experienced trademark attorney's assistance.  

How to Avoid a Likelihood of Confusion Refusal

• Conduct a comprehensive trademark search before applying to ensure your mark is unique.
• Select a trademark that is unique

Both of these would need to be undertaken BEFORE you file the application to provide the most benefit.  Unfortunately, you cannot amend the trademark name once you have filed the application.  Thus you may need to file a new application for a new mark.

Merely Descriptive Marks under Section 2(e)1 of the Act

A mark is deemed merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the applicant's goods or services.  A trademark that simply describes the product or service it offers is “merely descriptive” and may be refused. For example, a shoe company attempting to trademark the word "Comfortable" would likely face rejection.  This is a very difficult refusal to overcome, and again, your odds of a successful response are significantly increased with the assistance of an experienced trademark attorney.  This also is considered a substantive refusal ground. 

How to Address This

• Present legal arguments and/or evidence to overcome the refusal
• Seek to amend to the supplemental register
• claim acquired distinctiveness (ie. through long-term use of at least 5 years)

Generic Terms / Disclaimer Issues

A term that is generic (e.g., "Bread" for a bakery) cannot function as a trademark. Generic terms are considered common language for goods or services and cannot be exclusive to one entity.  Often if your trademark consists of multiple words and one or more is determined to be generic the office action will require that you issue a disclaimer for those words.  This is the type of office action that is non-substantive, in that you can agree to the disclaimer proposed by the Examiner to satisfy the office action.  However, if the trademark in its entirety is generic, then it is not able to function as a trademark.

Merely Ornamental

A trademark might be refused if, based on the specimen that you have provided, it is seen as if the trademark is merely a decorative element rather than a source identifier for the goods/services covered in the application. For instance, if your logo is simply a design printed on apparel without a clear connection to the brand, the USPTO may reject it.

How to Address This

• Provide a substitute specimen that evidences that the mark is used in a way that identifies the source, such as on labels or tags. (the substitute specimen must have existed at the time the application was filed)
• Amend the application to an "intent-to-use" basis.

Specimen Issues

A "specimen" is proof of how a mark is used in commerce. If your specimen does not meet USPTO requirements, such as not directly showing the connection between the mark and the goods/services, the application may be refused. Often people will submit computer mock-ups or a specimen that does not match the trademark drawing.  

How to Address This

• Submit correct specimens that align with USPTO guidelines—for example, photos of product labels, packaging, or screenshots of websites where the mark is used.
• Amend the application to an "intent-to-use" basis.

Merely a Surname

If your trademark comprises solely a surname (e.g., "Smith"), it's likely to be refused because surnames are not inherently distinctive.

How to Address This

• Evidence of acquired distinctiveness can help, such as showing the surname is well-recognized in connection with your brand.
• Evidence showing that the surname is rare, is not a surname of anyone associated with the application, or does not sound like a surname

Domicile Address

Applicants are required to provide a domicile address to demonstrate their place of business. If your address is incomplete or raises concerns, your application may be refused. This often happens when applicants provide only a P.O. Box or a virtual office location as their domicile address.

How to Address This

• Provide an acceptable domicile address
• Work with a trademark attorney to ensure all details meet USPTO requirements.

Class ID Problems

A trademark must specify the goods or services it identifies, categorized into established classes. Incorrect, incomplete, or conflicting class IDs can result in refusal.  Often, for this type of refusal, the Examiner will suggest an amendment that they consider to be acceptable.  So long as that amendment is accurate or fits the goods/services you are seeking to cover - it is usually a good idea to accept the amendment being offered.

How to Address This

• Ensure your goods/services match the accepted language in the USPTO Trademark ID Manual.
• Submit amendments to correct the class description if required.

Of note - you cannot expand your class descriptions after you have filed the application, you can only narrow them.

Geographically Descriptive Marks

Marks that primarily describe a geographic location associated with the goods or services (e.g., "California Wine") might be rejected for being geographically descriptive.

How to Address This

• Demonstrate that your product does not originate from the geographic location in question.
• Provide evidence that the mark has acquired secondary meaning unrelated to geography.

Overcoming a Trademark Refusal

Facing a trademark refusal doesn't mean your application is doomed. Here's how you can handle it effectively:

• Review the Office Action: The USPTO sends a detailed explanation (called an “Office Action”) outlining the reasons for refusal. Review it carefully.
• Seek Professional Help: A trademark attorney can help craft a detailed response to the refusal, offering legal arguments to support your case.
• Submit Evidence: Where applicable, provide additional evidence (sales data, marketing efforts, etc.) to demonstrate the distinctiveness or proper use of your trademark.
• Revise Your Application: If necessary, adjust your mark, goods/services description, or class selection and reapply.

Takeaway

The USPTO's trademark refusal process ensures that only valid, distinctive marks gain registration. While refusals can be challenging, they can often be overcome with the right approach.

If you're ready to secure your trademark without the headache, consider working with a trademark expert to avoid these common pitfalls. It's time to protect your brand and make your mark!

Have questions or need assistance? Reach out to us today, and we'll guide you through every step of the trademark process.