What Happens If My Trademark Application Is Denied?

Applying for a trademark can be an essential step in protecting your brand’s identity and ensuring that your business stands out in the marketplace. However, the process can be complex, and sometimes, Trademark Applications are denied. Read this article to learn about some of the common reasons for trademark denial, what you can do if your Trademark Application is denied , and how to strengthen your chances of success on a subsequent attempt. Here are some of the questions you may have:

Why Was My Trademark Application Denied?

Trademark Applications can be denied for several reasons, often falling into a few common categories. One of the primary reasons is a likelihood of confusion with an existing trademark. If your proposed trademark is too similar to one already registered, it can cause confusion among consumers. The U.S. Patent and Trademark Office (USPTO) takes this very seriously to ensure that consumers are not misled.

Another common reason for denial is that the trademark is merely descriptive, meaning that if the trademark simply describes the goods or services offered, it might not be distinctive enough to qualify for protection. For example, trying to trademark “Fresh Bread” for a bakery would likely be denied because it directly describes the product.

Additionally, a trademark can be denied if it is generic or has become generic over time. Generic terms are common words used to describe an entire category of goods or services and cannot be trademarked. For example, “Bicycle” for a brand of bicycles cannot be trademarked.

What Can I Do If My Trademark Is Rejected?

If your Trademark Application is denied, it’s not the end of the road; there are several steps you can take to address the issues raised by the USPTO. First, review the Office Action letter you received carefully. This letter will outline the reasons for the denial and provide details about any deficiencies in your Application.

One of the most common steps is to file a Response to the Office Action. In your Response, you can provide arguments or evidence to address the USPTO’s concerns. For example, if your trademark was denied due to a likelihood of confusion, you could present evidence showing that the two trademarks target different markets or audiences, reducing the risk of confusion.

In some cases, you might consider amending your Application. This could involve altering the description of goods or services to overcome the objections. It’s often beneficial to work with an experienced trademark attorney during this process to ensure your Response is comprehensive and persuasive.

If the USPTO maintains its refusal after your Response, you will receive a Final Office Action, where you will get a second chance to respond to the rejection of your Application. If the USPTO then continues to maintain its refusal you have the option to appeal the decision to the Trademark Trial and Appeal Board (TTAB). This process involves a more formal legal proceeding, and having legal representation is highly advisable.

How Can I Strengthen My Trademark Application?

To avoid the possibility of denial, it’s important to take steps to strengthen your Trademark Application from the outset. Conducting a thorough trademark search before filing can help identify any potential conflicts with existing trademarks. This search should cover not only the USPTO database but also common law trademarks that might not be registered but are still in use.

Ensuring that your trademark is distinctive is another crucial step. Avoid terms that are merely descriptive or generic. Instead, aim for a trademark that is arbitrary or fanciful. Arbitrary trademarks use common words in an unrelated context (e.g., “Apple” for computers), while fanciful trademarks are completely made-up words (e.g., “Kodak”).

Working with a New Orleans, Louisiana trademark lawyer can also significantly increase your chances of a successful Application. An attorney can provide valuable guidance on the distinctiveness of your trademark, help with the Application process, and offer strategies to address any potential issues before they arise.