Trademark applications are reviewed by an examining attorney at the USPTO before they are approved for registration.  If the examining attorney finds reasons to refuse your application, they will issue an Office Action with details on the reasons for refusal. We have described 5 common reasons for refusal of trademark applications below.

1) Likelihood of Confusion 

Likelihood of confusion is a common reason for refusal of a trademark application. The USPTO will review your application and compare your mark to any existing trademark applications or registered trademarks. If your mark is identical or “confusingly” similar to an existing mark and covers goods or services that are related (i.e. hats and t-shirts or jewelry and watches), your application may be refused. 

Likelihood of confusion between marks may be found (1) when the marks sound the same (even if spelled differently (i.e. Acme and Ackmi); (2) if they have the same meaning in different languages (i.e. water in English and agua in Spanish); or (3) when the marks are very similar even if displayed differently (i.e. Acme v. Acme).

Conducting a search prior to filing a trademark application to uncover any potential conflicts can help avoid rejection of your application based on likelihood of confusion.

2) Merely Descriptive and Deceptively Misdescriptive

An application for a trademark that describes your goods or services or a quality or characteristic of your goods or service may be found merely descriptive and may be refused registration on that basis. For example, COLD as a trademark for ice may be considered merely descriptive. In some situations, you may be able to obtain protection for a merely descriptive mark on the Supplemental Trademark Register. However, at times a merely descriptive mark may also be found generic (i.e. CAFE for a coffee shop). Generic marks are never eligible for registration.

A trademark may also be refused registration if it is found to be deceptively misdescriptive. For example, if your mark is LOVE CHOCOLATE, for desserts that do not contain any chocolate, this may be found to be deceptively misdescriptive.

3) Primarily Geographically Descriptive and Primarily Geographically Deceptively Misdescriptive

A trademark may be considered primarily geographically descriptive if consumers would mistakenly think the goods or services originate from the geographic area in the mark because the location is generally known. For example, the mark MIAMI NEWS ONLINE for a news website may be considered primarily geographically descriptive for a website providing news from Miami, Florida.

A trademark may be considered primarily geographically deceptively descriptive if purchasers would associate the goods or services with the geographic location but the goods or services do not originate from that area and the origin of the goods or services would impact a purchaser’s decision to buy the goods or services. For example, if your mark is STRAIGHT FROM ITALY, for wine that does not originate in Italy, the mark may be considered primarily geographically deceptively descriptive because Italy is known for wine and purchasers may be more inclined to purchase your product if they believed it was from Italy.

4) Primarily Merely a Surname

If your mark is primarily a surname (e.g. “Jones” for accounting services), then it may be refused registration. Whether a mark is considered primary a surname depends on a few factors. If you are the Applicant or you sign the trademark application on behalf of your business, and your surname is listed as the trademark, this supports a finding that the mark is primarily a surname. If the surname is very rare, has any other recognized meaning other than a surname or there are any other factors that support a finding that it is not primarily merely a surname, it may be eligible for registration. 

5) Ornamentation

Ornamentation is an issue that comes up often with trademark applications for clothing or other related goods. If a mark only appears as a decorative feature on the products listed on the application, it may be considered ornamentation and refused registration. For example, if you would like to trademark a slogan or phrase that you will print onto the front of t-shirts, this use may be considered ornamental. 

The key question is whether a consumer would see the mark as a decorative feature or as a trademark for your company. For example, many companies display their trademark on a shirt pocket, or on the inside label of a shirt. These would not be considered ornamentation. 

How a Trademark Attorney Can Help With the Trademark Application Process 

Knowing some of the most common reasons your trademark application may be refused can help you to avoid these issues and successfully register your trademark. A refusal of your application may delay the entire trademark registration process, increase your costs, and, in the worst-case scenario, force you to rebrand and restart the process. 

Consulting with a trademark attorney can be helpful in understanding the specific requirements for a trademark application. If you are interested in filing a trademark application and would like further guidance on the process, please contact us.

Our trademark attorneys are experienced in handling all types of intellectual property and trademark matters and can help you take steps to secure protection for your trademark and minimize risks.