3 Issues That Can Derail Your Trademark Application

One thing to know about trademark applications is that the U.S. Patent and Trademark Office (USPTO) is not lenient on trademark applicants who are not intellectual property attorneys. To be successful in your application, you must be thorough and adhere to all requirements of the application. And, to be sure, there is plenty that can go wrong with a trademark application. We’ll go over some of these common reasons in this blog and explain how best to avoid these office actions from the USPTO. 

  1. Not distinctive enough (merely descriptive). You might want to brag about a particular feature of your product or service. What’s more, you may want that to be the first things consumers hear about when they are introduced to your business’s offerings. For example, let’s say you sell artistic patches that people like to put on jackets and other clothing. Your designs have great color, so you want to be known as “Colorful Patches.” Unfortunately, this won’t work with the USPTO. Because it’s merely an adjective you want associated with your products, it will likely be rejected due to being merely descriptive. 
  2. Likelihood of confusion. This reason goes to the very purpose of trademarks–to distinguish the source of a particular product or service. If your proposed trademark sounds or looks like an existing trademark or has a similar meaning to one, there is a good chance your application will be denied. Having goods or services in a different class does not necessarily solve the problem. 
  3. Proposed trademark is primarily a surname. To preface, there are some well-known trademarks in existence that are, more or less, surnames. Examples include McDonald’s, Ford, and Chanel. The key for these trademarks is that they are widely known and established and are associated with (in consumers’ minds) specific products or people. If you have the same last name as someone who is famous, and decided to use your name for your brand, there is a high chance that the USPTO will reject your application. 

Lower the Chances of Refusal for Your Application

The list of reasons the USPTO can cite in order to refuse a particular trademark application is nearly endless. Because of this and the other strict requirements of a trademark application, the refusal rate for initial applications hovers around 80 percent. Conversely, that rate is only around 20 percent for applicants who work with our firm. 

We sit down with clients and have thorough discussions with them, making sure we understand their goals and long-term business plans. One of the many things we do for clients submitting a trademark application is a trademark availability search, which is vital to making sure the legal framework for your intellectual property is sound. For non-lawyers, the legal language required in a trademark application can present some challenges, requiring applicants to submit multiple applications (which can be a drain on resources). 

The bottom line is that we will help get your trademark application done right. We enjoy helping entrepreneurs apply their business dreams to reality. The first step for you is to schedule a 15-minute phone consultation with us. We look forward to discussing your business and intellectual property needs!

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Hayoon Kane Law Firm

I am committed to helping business owners such as yourself understand the intricacies of the law, so you can concentrate on growing your company.

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