Minneapolis creative law

Why was my trademark application refused?

There are several reasons the U.S. Patent and Trademark Office may refuse your trademark application. If they do, you have a choice between abandoning your efforts or arguing against the grounds for refusal. The USPTO recommends you have an attorney handle this. You have to act quickly, because you only have six months from the date of the Office Action (or notification from the USPTO) before a mark is abandoned.


1. Likelihood of Confusion. The most common reason is Likelihood of Confusion. When your mark is refused for Likelihood of Confusion it means that the examining attorney has found a registered trademark that is too similar to yours for a similar good or service.


For example, if your mark is Madhatter Glassware and there is a Madhatter Shoe Store, this is no problem because glassware and shoes are different enough. If the mark is Madhatter Glassware and there is a Madhatter Cups & Dishes, the goods are similar and there is great likelihood of confusion. The primary purpose of a trademark is to make sure consumers are not confused about the source of the goods or services.


2. Dealing with Likelihood of Confusion. Even if your application has been refused, you may be able to fight for your mark by arguing that businesses are not as similar as the trademark office thinks they are. In addition, you can try to get a Trademark Consent Agreement from the owner of the existing mark.


3. Other reasons for refusal. Other reasons include your mark being Merely Descriptive or Deceptively Misdescriptive, Primarily Geographically Descriptive or Primarily Geographically Deceptively Misdescriptive, Merely a Surname, or Ornamentation. These refusals may be impossible to overcome without changing your mark, or simple to defeat with a quick response fixing the grounds for refusal. These are very fact specific, so speak to a lawyer about your situation.


4. Office actions. You may hear back from the USPTO with an issue other than a refusal. These are called Office Actions. Common Office Actions include Insufficient Specimen or Mark Doesn’t Match Specimen. These office actions require quick, simple responses that put you on the path to registration. If you hire a lawyer to handle this, it can often be quick and easy.