What to Do After a Refusal of a Trademark

What to Do After a Refusal of a Trademark 1

You have worked hard developing your trademark. You researched the trademark process and submitted your trademark application yourself to save money. Unfortunately, many people who apply for trademarks are not successful. Have you received notice from the United States Patent and Trademark Office (USPTO) that the office has refused your trademark registration application? Or, are you hoping to apply for a trademark without the help of a lawyer? If so, understanding the reasons why the USPTO refuses trademark registration applications could be helpful. 

Conflict With Another Trademark 

To register a trademark, the mark must be original. After the USPTO receives an application, an examining attorney will refuse the trademark if an it conflicts with an existing trademark. When a trademark will cause confusion with an existing registered trademark, the examining attorney will send notice of refusal. 

Two trademarks cannot provide a similar mental reaction or convey the same general meaning. A skilled trademark attorney will conduct a thorough search to make sure that your trademark does not conflict with another registered trademark before you apply, saving you time and money. 

The Trademark is Decorative or Ornamental

The USPTO will refuse a trademark if the mark is merely ornamental or decorative. A trademark must clearly distinguish the applicant’s goods or services. For example, a design stitched on the back of a pair of jeans may not be a trademark, especially if the design does not identify the manufacturer or designer of the jeans. The trademark must identify the goods or services in a recognizable way. 

A trademark lawyer can help you overcome an ornamental refusal. He or she can help you submit evidence that the trademark has distinctiveness. An attorney can also help you submit evidence of the trademark on goods that are different from those goods or services listed on the trademark application. Finally, a trademark lawyer can help you submit evidence of another good or service that demonstrates use of the mark that is not ornamental. 

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Refusal for Descriptiveness

Another common reason for a trademark refusal is that the trademark is merely descriptive. The Lanham Act prohibits the registration of trademarks that merely describe the goods or services of a company.  An example of a trademark that could be merely descriptive would be a trademark of “Ice Cold” for a brand of ice. Additionally, “Jones Veterinary Services” is probably overly descriptive as it merely describes the services offered. On the other hand, Nike is a strong trademark because it does not merely describe the athletic shoes and clothes sold by the company.

Legal Options After Trademark Refusal
If you have received notice of a trademark refusal, hiring a lawyer can be extremely helpful. At the Benkabbou Law Firm, PLLC, one of our trademark lawyers can help you appeal the trademark examiner’s refusal by making office action responses or through the Trademark Trial and Appeal Board. We can also advise you as to any other options for securing a trademark. Contact our Tampa trademark law firm as soon as possible to schedule your initial consultation.