Most common reasons for trademark refusal by the USPTO

In comparison to other countries, it is the US that displays the lowest success rate when it comes to trademark registration. While only about 51.7% of all applications filed with the USPTO are successfully registered, this figure is considerably higher in the EU (90.0%) and the UK (78.7%). Moreover, Over the last five years, the success rate of trademark applications in the US has declined from 59.1% down to 51.7%.

The USPTO, as any other trademark office, follows a set of rules to evaluate trademark applications and either lets them proceed to registration or rejects them. However, while the UK and the EU intellectual property offices (UKIPO and EUIPO, respectively) merely notify the owners of previous trademarks about the new application, it is the general practice of the USPTO to automatically raise an office action against the new trademark application.

By definition, a trademark needs to display sufficient distinctiveness to identify the origin and ownership of the products and services. That means generic and descriptive words should be avoided at all costs.

A descriptive trademark is a term with a dictionary meaning that directly describes some characteristic of the product or service. Descriptive marks are not registrable right away, but if the applicant can prove the brand name has acquired distinctiveness, it can be registered. Examples of such trademarks include Best Buy and American Apparel. The underlying reason stems from the market-wide recognition of these brands which consequently enabled a successful trademark registration as the brand clearly signals the recognizable source of goods to the customer. Business owners should bear in mind that the mere inclusion of laudatory words (best, super, top, prime, etc.) or geographical terms is not sufficient to make a trademark distinctive. 

Terms with generic meaning, such as “shoes” for a shoe business, or “salt” for sodium chloride, can never acquire distinctiveness and are therefore unregistrable. Moreover, a brand name can become genericized if customers associate the name with a type of product/service rather than a particular brand, which is what happened to aspirin, yo-yo, cellophane and many others. When a brand becomes generic, it loses its right to trademark protection.

Another problem commonly associated with creating a distinct trademark is making sure that it is not too similar to already registered brands. Many starting businesses that tried to register their trademarks without prior research have either suffered rejection directly from the trademark office or received opposition from their competitors who registered before them. Trademark law strongly prioritizes companies that filed the trademark application first, even if the registration process was not yet completed. As a result, the USPTO in general recommends searching their trademark database (Trademark Electronic Search System, or TESS) prior to starting with the registration.

The USPTO conducts a search for conflicting trademarks as part of the official examination of an application only after a trademark application is filed. In evaluating an application, the examining attorney conducts a search of USPTO records to determine whether there is a conflict between the trademark in the application and a trademark that is either registered or pending in the USPTO. The principal factors considered in reaching this decision are the similarity of the trademarks and the commercial relationship between the classes of goods and/or services identified by the trademarks. To find a conflict, it is not required that the marks and the goods and/or services be exactly the same; instead, it is sufficient if the marks are similar and the goods and/or services related such that consumers would mistakenly believe they come from the same source.

Even if two marks are found to be confusingly similar, a likelihood of confusion will exist only if the goods and/or services upon which or in connection with the marks are used are, in fact, related. To find relatedness between goods and/or services, the goods and/or services do not have to be identical.  It is sufficient that they are related in such a manner that consumers are likely to assume (mistakenly) that they come from a common source.

Another common mistake is trying to register a trademark that might be considered deceptive by the USPTO. Deceptive trademarks suggest a component, ingredient, or objective that would mislead consumers. For example, a company uses the word ‘organic’ in its name but does not sell organic goods. The USPTO uses the following test to determine whether a trademark consists of or comprises deceptive matter: 

If your answer to any of these questions is yes, there is a high chance of your trademark application being rejected.

USPTO applications emphasise specificity and precision, and it can be easy to slip up if you aren’t familiar with the process. For example, choosing the wrong class or providing an unclear description of goods and services for your trademark can significantly reduce the chance of successful application. Other times the applicant can choose the wrong entity or list the name of the wrong person or company that owns the trademark. Skill, experience and attention to detail play an essential role in mitigating the potential risks that could impede a successful trademark registration. Find out more about how to maximise chances of a registration success or book a free consultation with a professional trademark attorney to increase your chances of successful application.

To avoid rejection for descriptiveness or genericness, ensure your trademark is distinctive and not a common term used to describe your goods or services. Aim for a unique name that doesn’t directly describe the product’s features or the service provided. Conduct a thorough trademark search to confirm your chosen name isn’t commonly used or too similar to generic terms.

To minimize the risk of rejection due to likelihood of confusion, perform a comprehensive search of existing trademarks using the USPTO’s Trademark Electronic Search System (TESS) before applying. This helps identify any similar trademarks that could lead to confusion. If possible, consult with a trademark attorney who can help assess potential conflicts and ensure your mark is distinctive enough to avoid overlap.

Common application errors include selecting the wrong class of goods or services, providing unclear or vague descriptions, and listing incorrect ownership details. To minimize these errors, carefully review your application for accuracy and completeness. It might be helpful to consult a trademark attorney who can guide you through the process and ensure that all details are correctly filled out to avoid unnecessary delays or rejections.

[1] https://www.wipo.int/pressroom/en/articles/2021/article_0011.html