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Want to know why trademarks are often rejected? Well, let me tell you from experience there are usually quite a few reasons! While I'm not a practicing attorney, I studied law and work with attorneys every week — so I know that I can assist here.
Okay, but let me get to it — here are the top reasons for trademark rejection:
This is the most common reason for your trademark protection getting rejected. For practical application, let's explore an example:
John registers the trademark Moogle for his SEO software that can be used to audit web pages and offer suggestions for reducing errors and improving site performance.
He realizes that it sounds like Google but doesn't worry about it because Google is a search engine, and he's creating SEO software. He believes they're different enough.
Is he correct?
Unfortunately, the mark will likely be rejected because Google offers many SEO tools. See the importance of doing thorough research?
John has had to wait a year for his application, only for it to be rejected. He is now forced to apply again to protect his business. In addition, he has to rebrand, which will cost him his currently earned brand reputation and value.
Unfortunately, a lot of cases of likelihood of confusion could have been avoided with sufficient research and know-how. The problem is: trademark law is complex. And so, it's always advisable to contact a licensed trademark attorney who can take you through the complexities and ensure registration without any hassles.
Have you ever signed a document where, right at the start, it encourages you to read through it all carefully and with consideration? That level of care and attention has to be applied when completing your trademark application.
Any errors could mean a lot of wasted time, money, and effort. While the Trademark Office may deem your problem amenable and issue an office action instead (giving you a chance to fix your mistakes), is that something you want to leave to chance?
Did you know? The trademark application process can take anywhere from 12-18 months due to the sheer number that the USPTO has to deal with daily.
Some trademarks just aren't distinctive enough. How so? Well, let me explain:
First, we have generic words, like Towels for a towel store or The Donut Shop for a donut store. Neither of these will work. Why? You cannot trademark generic words such as Towels, Donut, or Shop.
Then we have descriptive words for goods and/or services, which are a little better and can be trademarked. However, these are not commonly trademarkable.
The only exception is if you can prove the mark has been used in commerce for some time and is attributable to your brand.
Otherwise, words like "Creamy" for ice cream are not trademarkable.
Okay, this point may sound peculiar if you've never filed a trademark. But hear me out:
With each trademark application, you must include a mark specimen. What does this mean?
Well, consider it a sample of your trademark as it's used commercially for your goods or services.
This could be a brochure or even a picture of an advert. So long as the specimen displays its use, it's fine.
That said, often people provide unclear specimens that do not adequately display the trademark's use in commerce. In these cases, your mark could be rejected, or you may receive an office action to provide a proper specimen instead.
While this should be apparent to anyone trying to register a trademark, unfortunately, this isn't always the case.
A mark is considered immoral or simply unregistrable when it's:
“shocking to the sense of truth, decency or propriety; disgraceful; offensive; disreputable; … giving offense to the conscience or moral feelings; … [or] calling out for condemnation,”
From this, you should take that should your mark contain offensive language or symbolism, it'll likely be rejected.
Unauthorized use of governmental flags, symbols, or similar is disallowed from being used commercially and, therefore, will be rejected by the USPTO for trademark registration.
In addition, official titles and international symbols will also result in trademark rejection.
Leaning on any of these for commercial benefit is strictly prohibited.
As you've seen, trademark application rejection is all too common.
And trademark insurance in the form of a registered trademark is crucial.
That's why not only is it essential to carefully complete your application, provide proper specimens, and carefully consider what trademark would actually be declared valid — it's also vital that you seek legal counsel.
Trademark law is complicated. A trademark lawyer can actually save you time and money by helping you avoid these costly rejections.
There are many reasons for a trademark to be denied. One of the most common is likelihood of confusion. This is self-explanatory. It occurs when your trademark is likely to confuse consumers into things affiliated with or the same as another mark. Another unfortunately common reason is errors in your application itself.
While you may feel that your trademark is fool-proof, it's often the case that the searches you've conducted yourself were not detailed enough. That's why it's so important to consult a trademark attorney who can conduct a comprehensive trademark search and ensure the success of your application.
Less than half of all trademark applications are approved without an office action. So, in short, trademarks are rejected exceptionally frequently. This is for many reasons, the most common of which is that people rush through the application process and don't seek legal counsel, presuming it'd be easy to do on their own.
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Joshua J. Brouard brings a rich and varied background to his writing endeavors. With a bachelor of commerce degree and a major in law, he possesses an affinity for tackling business-related challenges. His first writing position at a startup proved instrumental in cultivating his robust business acumen, given his integral role in steering the company's expansion. Complementing this is his extensive track record of producing content across diverse domains for various digital marketing agencies.
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