How to Avoid Top 8 Trademark Rejections | why USPTO trademark application get denied

Summary

In this video, attorney Elizabeth Pots Weinstein outlines eight common reasons trademark applications are rejected by the U.S. Patent and Trademark Office and offers guidance on how to address these issues. Key reasons include filing under incorrect classes, submitting inappropriate specimens, and using merely descriptive terms. She emphasizes the importance of having a valid physical address, the need for legal representation for non-U.S. applicants, and the challenges of proving distinctiveness. By understanding these potential pitfalls and proactively addressing them, applicants can enhance their chances of successful trademark registration.

Takeaways

• 😀 Trademark applications can be rejected for various reasons, and applicants should be prepared to address these issues promptly.
• 🕒 Applications are currently taking around nine months to be reviewed by examiners, and applicants usually have two main opportunities to respond to rejections.
• 📦 Selecting the correct class and providing a precise class description for the trademark application is crucial to avoid objections.
• 📸 The specimen provided must accurately represent how the trademark is used; for product trademarks, images of the product are required.
• 🔍 Trademarks that are merely descriptive of the goods or services can face rejection, but applicants may seek registration on the Supplemental Register.
• 🏠 A real domicile address is mandatory when filing a trademark application; PO boxes and virtual addresses are not acceptable.
• 👩‍⚖️ If the trademark owner is not based in the U.S., they must be represented by a licensed attorney in the U.S. for their application.
• ⚖️ Likelihood of confusion with existing trademarks can lead to application rejections; this often requires legal arguments to overcome.
• 📝 A disclaimer may be required for generic terms in the trademark to clarify that they are not exclusive to the applicant.
• 🏷️ The trademark must clearly identify the business as the source of goods or services, not just the individual owner, to be accepted.

Q & A

What are the common reasons for trademark application rejections?

Common reasons include being in the wrong class, having an incorrect specimen, being merely descriptive, not providing a real domicile address, confusion with existing trademarks, needing a disclaimer, and not identifying the business as the source of products or services.

How long does it typically take for an examiner to review a trademark application?

Currently, it takes about nine months for an examiner to review a trademark application.

What should an applicant do if their application is rejected for being in the wrong class?

If rejected for being in the wrong class, the examiner will usually provide a new class description. Applicants can then choose to amend their application to fit the correct class.

What is a specimen, and why is it important in a trademark application?

A specimen is an example that proves the use of the trademark. It is important because the USPTO requires evidence that the trademark is actively being used in commerce.

What happens if a trademark is considered merely descriptive?

If a trademark is deemed merely descriptive, the applicant may be directed to file on the Supplemental Register instead, which offers less protection but allows the trademark to be registered.

What does the domicile requirement entail for trademark applications?

The domicile requirement mandates that applicants provide a real physical address for the business owner or the location of the business, not just a P.O. Box or virtual mailbox.

What is likelihood of confusion in trademark applications?

Likelihood of confusion refers to the possibility that consumers might confuse one trademark with another due to similarities in appearance, sound, or meaning, which can lead to rejection of the application.

Why might an applicant need to provide a disclaimer in their trademark application?

A disclaimer may be required if the trademark includes generic or common terms, indicating that the applicant does not claim exclusive rights to those terms outside the context of the trademark.

What does it mean for a trademark to identify a business as the source of products or services?

A trademark must clearly indicate that it represents the business providing the goods or services, rather than just being a name or description of the individual owner.

How can applicants respond to a rejection of their trademark application?

Applicants typically have two main chances to respond to rejections, with a six-month period to reply and an option for an additional extension. They may also appeal the rejection or amend their application as needed.