Common Grounds for Trademark Refusals

When you submit your trademark application, there is a possibility that you will receive a refusal for registration from USTPO. To avoid this, you should make sure that your trademark doesn’t fall under the most common grounds for refusal.

One of the possible reasons is the Likelihood of Confusion. This means that there is a conflict between your mark and an already existing registered or pending trademark in the USPTO, and that these two marks are very similar. If two marks are similar in sound, appearance or meaning and the commercial relationship between the goods and services identified by the marks is close, USPTO may make a decision to refuse you in registration. It is also the reason why trademark searches are important as you might proactively determine whether it is effective to spend time and money on filing your application or perhaps you should consider a partial trademark change or a complete rebranding.

Another ground for refusal is your trademark being Merely descriptive or Deceptively Misdescriptive. It might happen if it directly describes the ingredient, quality, characteristic, function, property, purpose or use of the specified goods or services. For instance, if you plan to sell fruit juice under the “Fresh Juice” mark, it would be considered merely descriptive. On the other hand, if your trademark suggests what your goods or services are not or do not contain, it would receive refusal as deceptively misdescriptive.

Following that, your trademark application might receive a refusal on the basis of being Primarily Geographically Descriptive and Primarily Geographically Deceptively Misdescriptive. As you can understand, this ground is tied closely to the geographical origin of your goods or services. The examiner will refuse to register a mark as primarily geographically descriptive if the main meaning of the mark is a well-known geographical location, customers may think that the goods or services originate from the geographical location indicated in the mark, i.e., customers may create an association of goods/place or services/place and if the mark indicates the geographical origin of goods or services.

The trademark will also not be registered if the main meaning of the mark is a well-known geographical location, if buyers are likely to believe that the goods or services originate from the geographical location indicated in the mark; in other words, buyers will associate the goods/place or service/place, if the goods or services do not originate from the place indicated in the mark and if the misleading designation will be a significant factor for a significant part of the relevant consumers in making a decision to purchase the goods or use the service.

Another common ground for refusal is ornamentation. If the trademark looks mostly as a decorative feature or part of the “dress” of the goods, it may be considered as ornamentation and may be refused by the USPTO examining attorney. Such trademarks serve as ornamentation and do not have the function of identifying and distinguishing the applicant’s goods from those of others.

Finally, the trademark being a surname or primarily a surname would also receive a refusal from the USPTO examining attorney. The complete list of substantive grounds for refusal can be found on the USPTO website.

Before submitting your application, it is important to evaluate your mark on these grounds carefully. A trademark attorney can provide you with legal guidance in conducting trademark searches and developing the right filing strategy based on your goals.