Trademarks are an essential part of branding for any business or product, as they help distinguish it from competitors in the marketplace.
However, registering a trademark can be a complex and time-consuming process, and it’s common for a trademark application to be refused by the relevant authorities.
If you find yourself in this situation, you may not have to worry – there are several steps you can take to address the issue and increase your chances of ultimately securing the trademark you want.
Here’s what to do if your trademark is refused:
Understand why the trademark was refused
The first step in dealing with a refused trademark application is to understand the reason why it was refused.
There are several reasons why a trademark might be refused, including:
- The trademark is too similar to an existing trademark
- The trademark is descriptive or generic
- The trademark is offensive or scandalous
- The trademark is too vague or imprecise
Understanding the specific reason why your trademark was refused is vital in order to help you identify the steps you need to take to address the issue.
Consider your options
Once you understand why your trademark was refused, you can begin to explore your options for addressing the issue.
Some potential options include:
- Amending the trademark application to address the issues that led to the refusal
- Appealing the refusal decision to the relevant authorities
- Filing a new trademark application with a different trademark
- Filing a trademark opposition to a conflicting trademark held by another party
Of course, it can be difficult to know which of those options are viable in your particular situation. That’s why I recommend the next step…
Consult with a trademark attorney
If your trademark application has been refused, it’s a good idea to consult with a trademark attorney who can help guide you through the process of addressing the issue.
A competent and experienced trademark attorney can help you understand the reasons why your trademark was refused, explore your options for addressing the issue, and provide expert advice on how to increase your chances of ultimately securing the trademark you want.
Want to discuss your trademark refusal? You can contact me by using the contact form on my site or setting up a consultation to discuss.
Address the issues that led to the refusal
If your trademark application was refused because of specific issues with the trademark itself, such as its descriptiveness or similarity to an existing trademark, you may be able to address these issues and refile the trademark application.
Some steps you can take include:
- Amending the trademark application to address the specific issues that led to the refusal
- Conducting a trademark search to identify potential conflicts with existing trademarks
- Refining the trademark to make it less generic or descriptive (this may require filing a new application)
- Providing evidence that the trademark has acquired secondary meaning in the marketplace (this can be tough to prove, unless your trademark is already popular with consumers)
Addressing the issue with the examiner usually requires preparing substantive legal arguments, including citing prior decisions and providing evidence to back up your case. Generally this is best handled by a professional!
Appeal the refusal decision
If you believe that the refusal decision was made in error or that the specific issues that led to the refusal have been addressed, you may be able to appeal the decision to the relevant authorities. This includes the Trademark Trial and Appeal Board, in the context of a US trademark application.
In some cases, appealing the decision can be a time-consuming and complex process, so it’s important to work with a trademark attorney who can guide you through the process. Since there are filing fees involved, you don’t want to waste money appealing a case that is almost sure to lose.
File a new trademark application
If you are unable to address the issues that led to the refusal or successfully appeal the decision, you may need to file a new trademark application with a different trademark.
It’s important to conduct a thorough trademark search before filing a new application to identify any potential conflicts with existing trademarks or any issues with the underlying trademark itself (some of which may have gotten your first application refused).
Wrapping up – what do you do if your trademark is refused?
In conclusion, having a trademark refused can be a frustrating and time-consuming process, but it’s important to understand that it’s not the end of the road.
By understanding why the trademark was refused, exploring your options for addressing the issue, and working with a trademark attorney, you can increase your chances of ultimately securing the trademark you want.
