What to Do If Your Trademark Is Rejected by the USPTO

How to Appeal & Protect Your Brand If Your Trademark Is Rejected

Facing rejection from the United States Patent and Trademark Office (USPTO) can be daunting for any business owner seeking to protect their brand identity. In the intricate world of trademarks, navigating the path to approval isn’t comfortable, but fortunately, there are ways to make the process easier.

An Arizona business attorney will explain below some essential steps to take if your trademark application is denied by the USPTO. Whether you’re an established corporation or a small startup, understanding the process is crucial. 

Let’s explore the reasons behind trademark rejections and discover how the expertise of a business attorney can be instrumental in turning the tides in your favor, ensuring your brand receives the protection it deserves.

How the USPTO Prevents Trademark Monopolization & Consumer Confusion

The USPTO can identify many grounds for trademark refusal, which are listed in the Trademark Manual of Examining Procedure. Examining lawyers must consider the following possible grounds when deciding whether to approve a trademark application: 

• Lack of Distinctiveness: If your proposed trademark is generic, descriptive, or common, it may lack the distinctiveness required for trademark protection. The USPTO aims to prevent the monopolization of everyday words or phrases.
• Likelihood of Confusion: Your trademark may be rejected if it’s similar to an existing registered trademark in a way that could confuse consumers. The USPTO ensures that new trademarks don’t infringe upon existing ones.
• Descriptive or Generic Terms: If your trademark merely describes the goods or services it represents, the USPTO considers your trademark too descriptive. You can ask your Arizona business lawyers for help in this case to get successful protection from the USPTO by either obtaining a secondary meaning for your trademark or changing your trademark so that it is not merely descriptive. Generic terms, which apply to an entire category of products, are also ineligible for trademark protection.
• Immoral or Scandalous Content: Historically, trademarks containing offensive, immoral, or scandalous content could be rejected by the USPTO due to the USPTO’s regulations regarding public decency and morality. However, recent US Supreme Court decisions have limited the USPTO’s authority to reject trademarks for this reason. If you do receive a rejection from the USPTO because your mark is offensive, immoral, or scandalous, your Arizona business lawyers can help you determine if the rejection aligns with the Supreme Court’s decisions.
• Geographical Indicators: If your trademark primarily consists of a geographic location, it may be denied as it could describe, or misdescribe, the origin of the goods or services and thus is either not distinctive enough, or misleading to consumers. 
• Misleading Marks: Marks likely to mislead or deceive the public about the nature, quality, or origin of the products or services are typically rejected.
• Name, Portrait, or Signature: If your trademark includes a name, portrait, or signature of a living person or deceased U.S. President, your trademark may be rejected by the USPTO if you did not obtain the written permission of that person to use their name or likeness, or your mark consists only of a surname. If your application is rejected for this reason, your Arizona business lawyers can guide you on the adjustments you can make to your application or your mark to successfully register your mark. 
• Issues with the Application: All of the reasons why the USPTO rejects applications which are listed above are problems with the trademark itself. However, the USPTO also refuses applications if the application was not completed correctly. Some common mistakes include submitting a specimen that does not show the mark being used in commerce, describing goods or services without using a description from the Trademark ID Manual, and not submitting a disclaimer of descriptive words when required. Your Arizona business lawyers can help you understand and fix any problems with your application. 

8 Steps to Take When Your Trademark Is Rejected

You can try a few things when getting your trademark rejected, including an appeal. If you wish to appeal, you may do it by filling out the official appeal with the Trademark Trial and Appeal Board (TTAB). The TTAB is a part of the USPTO that focuses on trademark-related problems. However, this is only the first step of the process.

Let’s check the steps you can take with a business lawyer:

Review the Rejection Letter

A rejection letter from the USPTO is called an office action. Carefully examine the office action when you receive it. It will specify the grounds for rejection, allowing you to understand why your trademark application was denied. Also, make sure you write down the deadline to respond to the office action. 

Consult Your Business Attorney

Seeking legal advice from a business attorney experienced in trademark law is highly advisable. They can help you interpret the rejection letter and guide you through the process. 

Evaluate Your Options

Discuss potential courses of action with your attorney. You may respond to the office action, amend your application, appeal the rejection, or abandon the trademark altogether. The best strategy depends on the specifics of your case.

Respond to the Rejection Letter

The USPTO airs on the side of caution, so sometimes you receive an office action even though your application meets all of the USPTO’s criteria. For example, the USPTO may think your trademark is confusingly similar to another trademark when the marks are not similar enough to cause consumer confusion. You can explain your disagreement with the USPTO through an office action response. A good office action response to a rejection for issues with the trademark itself rather than the application, usually includes citations to cases and the trademark manual of examining procedure, examples of other registered trademarks, evidence, and a thorough and persuasive evaluation of the factors the examining attorney is required to consider when examining your application. Your Arizona business attorneys can prepare an office action response for you and communicate with the examining attorney on your behalf. 

Amend Your Application

If the rejection is due to issues that can be rectified, such as a minor wording change, you can amend your application. Your attorney can help you make the necessary adjustments.

Consider an Appeal

If you think the rejection is unfair or incorrect, you can appeal with the TTAB. This process involves presenting your case and arguments to contest the rejection. Before you appeal a decision, you should first respond to the examining attorney’s office action and then appeal after you receive the final rejection letter. 

Gather Additional Evidence

Remember to collect evidence for your case if you choose to respond to the office action or appeal. This may include consumer surveys, expert opinions, or any other relevant data that can demonstrate the non-confusing nature of your trademark.

Maintain Communication

Stay in regular contact with your attorney and the USPTO to ensure you meet all the necessary paperwork and deadlines during the appeals process.

Can Still Use Your Trademark Rejected By The USPTO

Trademark rejections often occur when your proposed trademark closely resembles existing ones. When this happens, it’s essential to take a close look at your trademark and try to address these similarities. Using a trademark that’s similar to another one might lead to a legal dispute. 

But is it possible to use a trademark rejected by the USPTO? In certain situations, you may still be able to use it. There might be options if the rejection wasn’t solely due to similarity with another mark. 

If you’re considering using a rejected trademark, it’s a good idea to consult with an intellectual property attorney. They can guide you on the legal implications and help you understand whether using the trademark is a viable choice.

Get The Legal Assistance With Denton Peterson Dunn You’ve Been Looking For

If you’re facing a trademark rejection and need professional legal assistance, we encourage you to get in touch with Denton Peterson Dunn. We specialize in intellectual property law and can provide tailored solutions to your trademark challenges. Don’t hesitate to contact us today to explore your options and protect your brand for the future!

 

Brad Denton – Denton Peterson Dunn

1930 N Arboleda #200
Mesa, AZ 85213
Office: 480-660-3249
Email: [email protected]
Website: https://arizonabusinesslawyeraz.com

7272 E Indian School Rd #540-132
Scottsdale, AZ 85251
Phone: 480-690-3283
Email: [email protected]