If a USPTO examining attorney believes that your trademark does not comply with the trademark registration requirements, your trademark application will be rejected. This could be for a number of reasons, such as a likelihood of confusion between your mark and another registered trademark, your mark failing to function as a trademark, or your mark being perceived as descriptive or generic. An examining attorney will issue a non-final office action detailing the reasons for the refusal. If you have received a trademark office action, there is still an opportunity to submit a response in an attempt to overcome the refusal.

Can You Use a Trademark That Was Rejected? 

A trademark registration is not required to use a trademark in the United States. However, there may be some risks in using a trademark without a registration. Use without registration increases the risk of future challenges by a third-party registrant against the expansion of your geographical scope and/or goods or services. You would also not receive the benefits of a federal trademark registration such as a legal presumption of ownership and validity of your trademark, among other benefits. Whether or not you should use a trademark that was refused registration depends on the reason for refusal and your unique circumstances.

Four Options to Consider If Your Trademark Gets Rejected 

If your trademark gets rejected, you have some options on how to proceed. A couple of options include (1) attempting to negotiate co-existence with the owner of the conflicting mark if it makes sense to do so; (2) submitting a request for reconsideration; (3) filing an appeal of the decision; and/or (4) selecting a new mark and submitting a new application.

Option 1: Attempt to Negotiate With The Owner of the Conflicting Mark

If your trademark is rejected based on a likelihood of confusion with an existing registration, if the circumstances support it, an option may be to reach out to the owner of the conflicting trademark in an attempt to reach an agreement to co-exist in the marketplace. When a trademark application is rejected due to a likelihood of confusion with a prior pending trademark application or registered trademark, a consent-to-use agreement or coexistence agreement is sometimes utilized to secure the trademark registration. If an agreement is reached, a copy of the agreement can be submitted to the examining attorney who may take it into consideration when determining whether to reverse the refusal of your mark. While an examining attorney is not bound to reverse their refusal based on such an agreement, if it addresses any potential concerns about confusion, it can increase the chances of your trademark application being approved.

Although reaching out to the owner of the conflicting mark can be advantageous, there are potential risks. Reaching out to the owner of the supposedly conflicting trademark makes them aware of your use or intent to use. Instead of agreeing to co-existence or providing consent, they may decide to challenge your use or application for registration. Co-existence agreements can be complicated and may govern how and where you may use your trademark going forward. Therefore, these agreements shouldn’t be entered into carelessly. 

Option 2: Submit a Request For Reconsideration

If you are unable to overcome the non-final office action, a final office action will be issued. In response to a final office action, a request for reconsideration may be submitted to the USPTO examining attorney. With the request for reconsideration, any additional arguments or information is submitted to the examining attorney, who will then review the application again, taking into account any new information provided, and decide whether there are any new legal justifications for approving the trademark application. A request for reconsideration can be filed in lieu of or along with an Appeal (described below).

Option 3: File an Appeal of the Decision 

After a final office action is issued, the examining attorney’s decision can be appealed to the Trademark Trial and Appeal Board (TTAB) at the USPTO. The TTAB reexamines the examining attorney’s decision to determine whether the proper conclusion was reached. An appeal can be filed in lieu of or along with a request for reconsideration.

Option 4: Submit a New Application 

Instead of submitting arguments or attempting to negotiate with the owner of a conflicting mark, you might decide to revise or change the trademark and then submit an application for the new trademark. 

In some instances, this option can prove just as costly as the other options identified. When you rebrand, you may need to update any product packaging, websites, or marketing materials, and you may even need to file documentation with the Secretary of State of the state where your business has been formed.

Speak With an Experienced New York City Trademark Lawyer 

Consulting with a trademark attorney can be helpful in understanding the specific reasons for the rejection of your trademark application and exploring your options. 

If your trademark application has been rejected and would like guidance on your options, please contact us.

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