So you want to start a business and apply for your first trademark? It sounds simple - just show the government the name and design, and you’re good to go, right? Unfortunately, it’s a little more complicated than that. Establishing a trademark and ultimately getting it approved can often feel like you are required to defend it in court. The United States Patent and Trademark Office (“USPTO”) is the prosecutor, and your trademark is, in a sense, invalid until proven valid.
The majority of trademarks are initially refused or rejected by the USPTO. Here are the main reasons a trademark can be rejected:
Likelihood of Confusion. You may think your trademark is wholly original, but it is likely that someone else has already registered something similar. If the USPTO thinks your trademark idea is too similar to someone else’s, they will initially refuse it or issue an “Office Action” requiring you to respond, and make a case for why your trademark is not similar to one already registered. You need to make sure your trademark name is as original as possible. For example, if you come up with a brand of hair care products called “Harry’s Hair Care,” and someone already trademarked that name for hair care products, your trademark will be rejected. But what if there is a barbershop that doesn’t sell its own line of hair products, but is still called “Harry’s Hair”? Your trademark could still be rejected because the names are similar and they both are related to the hair care industry. This means consumers will likely confuse the two brands. On the other hand, if you were to start a jackrabbit farm, and trademark it as “Harry’s Hares,” you have less likelihood of rejection on those grounds because even though the names are similar, the goods or services are quite different. To help avoid likelihood of confusion, you or an attorney should perform a thorough search with the USPTO using the Trademark Electronic Search System (TESS). Be aware that even if you think your trademark is unique enough, the USPTO may still refuse it, or issue an Office Action.
Merely or Deceptively Descriptive. If you open a store that sells pants in a town called Spring City and call it “Spring City Pants,” the USPTO will likely reject that trademark because it merely describes the goods being sold. “Peter’s Pants,” on the other hand, is stronger because the additional label sets your pants apart from other pants sold in Spring City. If you go with “Big Pocket Pants”, but your pants have no pockets, then the USPTO will likely judge the trademark as “deceptively descriptive”. You want to avoid anything that appears to be deceiving consumers.
Geographically Descriptive: If you call your legwear store “African Pants,” and your pants aren’t made in Africa, then it is “deceptively geographically descriptive.” Even if your pants are made in Africa, then they are “merely geographically descriptive.” What sets them apart from any other pants made in Africa? Likewise, if you use symbolism like a country’s flag, or the country’s geographic shape, the trademark will likely be rejected, though you might have a better chance if the geographic location is not generally known. The idea is to keep well-known geography from being a mark’s primary feature.
Mainly a Surname. If your name was Peter Banning, and instead of “Peter’s Pants” you went with “Banning’s Pants,” it would likely be rejected because the primary part of the mark is the surname. You may be able to use a surname if the term is not “primarily merely” a surname according to the statute. For example, names like “Cotton” or “King” that have meaning beyond being surnames have a higher likelihood of being accepted.
Ornamentation. If you want to trademark something like a slogan or symbol covering the front of a T-shirt, it may be rejected. This is because the slogan or symbol itself may not be perceived by the public as a trademark. On the other hand, a small design, or discrete wording, like a word on a pocket or breast area of a shirt, could be an acceptable trademark. For example, a big flower covering a T-shirt looks like a decoration. A small flower off to the side looks like a logo, which is what you want. Also beware of common expressions or symbols like the smiley face, peace sign, or the phrase “have a nice day,” since these are not perceived as distinct enough to be trademarked. You want your mark to stand out, to look more like a symbol that is identified with your goods, services, or brand, rather than a generic decoration that could come from anywhere or mean anything. If your mark is already identified with goods or services other than those you want to register it to, then you can get around the ornamentation factor. For instance, “MORK & MINDY” was approved for decals because it was already recognizable as the name of a TV series, so the mark could be registered.
These are the main reasons why a trademark may be refused or cause the USPTO to issue an Office Action. Having an experienced attorney assist you can help you determine the likelihood of a USPTO refusal and how to overcome it. If you need help registering your trademark or defending its validity, contact us, we’d be happy to help!
Photo: Ryan Stone (Unsplash)