Trademarks are tough to navigate on your own.
A large part of my trademark practice is responding to USPTO refusals to try and get trademarks registered after they were rejected – often this is when someone has filed an application without a proper clearance search or advice beforehand.
While there are a lot of different reasons that a USPTO trademark examiner can refuse to register your trademark, I’ve listed the six most common reasons below.
For each one, I’ll discuss the reason and provide an example you can look at!
Likelihood of Confusion with an already registered mark:
I think that the most common reason for refusing to register a trademark is a “likelihood of confusion” between the proposed trademark and a trademark that’s already been registered. It could also be confusion between your proposed mark and one which is the subject of a pending, previously-filed application.
When the United States Patent & Trademark Office’s (USPTO) reviews a trademark application, it conducts a search for conflicting marks, much like I do for clients before we file the application. These “conflicting” marks means marks that cause a “likelihood of confusion” with a registered trademark.
A likelihood of confusion is found when the proposed mark resembles an existing mark or application, and a potential consumer is likely to be confused or deceived as to the source of the goods or services that are connected with the two trademarks. This is one of the most common types of trademark infringement.
Examiners at the USPTO determine whether there’s likelihood of confusion based on a set of factors in a court opinion like the famous Sleekcraft decision (AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979), if you want to check it out).
The main factors considered are:
- The strength of the original trademark
- How close the goods and services associated with the two trademarks are
- How similar the two marks are (spelling, sound, overall commercial impression)
- Whether there is any evidence of actual confusion (confused customers emailing you because they thought you were the other company, etc.)
- How close the marketing channels used by the two trademark are
- The particular type of goods and the degree of care in choosing a product that purchasers of those goods will exert
- Your intent in selecting the mark (did you do it in bad faith to take advantage of the existing trademark’s goodwill?)
- The likelihood of expansion of the product lines into overlapping goods.
While these eight factors cover a lot of ground, typically an examiner is going to find likelihood of confusion if the marks are similar and the goods and services are related so that consumers would mistakenly believe that the goods and services come from the same source (factors #2 and #3 above).
It’s important to know, though, that likelihood of confusion can be found even if the two trademarks aren’t identical, and even if they’re not in the same “class” of goods or services designated by the USPTO (although they need to be “related” or at least similar).
Note: simply adding an “s” to make another trademark plural (or making it singular), changing up the spelling, or making other small adjustments won’t usually make it different enough to avoid a refusal! I wrote more about this on Jamey Stegmaier’s Kickstarter Lessons blog, where I give examples of situations where two trademarks were too close for the courts to let co-exist.
Also, proof of actual confusion isn’t necessary to reject the registration, only a likelihood that the two trademarks are similar enough to cause confusion as to the source of the goods or services. It’s all speculative!
As an example, look at Nintendo’s application for CHIBI-ROBO, for video game software. It was refused due to a likelihood of confusion with an existing trademark for CHIBIBOTTO, also for video game software and various other goods.
While Nintendo was unable to get this refusal overturned initially, the blocking application was eventually abandoned and Nintendo’s went on to be registered.
“Merely Descriptive” and “Deceptively Misdescriptive” refusals:
Often, applications are refused due to a trademark being merely descriptive or deceptively misdescriptive. What do those terms mean and why are they a problem?
Your trademark is refused for being Merely Descriptive
A mark is considered merely descriptive if the trademark itself merely describes a quality, characteristic, feature, function, use, purpose, or ingredient of the product or service.
It is not necessary that a mark describe all the purposes of a product or all the features of a service. Even if the mark only describes one aspect of the goods or services, the USPTO may find the trademark is merely descriptive.
This is why we try to avoid having any “descriptive” portions of the trademark, if we can avoid it. However, with something like “Fantasy Flight Games,” the “Games” portion is going to be considered “descriptive.” That’s because it’s just describing the products – games.
But because the whole trademark isn’t descriptive, there’s enough there that is distinctive enough to be a good trademark. It’s when your whole trademark is just describing your products and services that you’re going to be refused for being “merely descriptive.”
As an example, consider this abandoned application for POGS, in connection with action skill games and similar physical games (basically, what we know as “Pogs”). It was rejected due to being merely descriptive.
In this case, because “Pogs” were already common enough to be in the dictionary, trying to file a trademark for it wasn’t going to work.
Your trademark is refused for being Deceptively Misdescriptive
A mark is considered deceptively misdescriptive if it:
- immediately communicates an idea regarding a characteristic, purpose, quality, or feature of the product,
- and the idea is false, but plausible
If those are true, then the mark is deceptively misdescriptive.
The USPTO will determine if a mark is deceptively misdescriptive by first determining whether a mark misdescribes the goods. If the mark is found to be misdescriptive, the USPTO will then consider if anyone is likely to believe the misrepresentation.
If they determine there is a likelihood consumers would believe the misrepresentation, they will refuse the registration.
This can be tough to overcome – we would need to prove that it’s NOT misdescribing your goods and services in a way that’s plausible, which may not be possible.
Primarily Geographically Descriptive and Primarily Geographically Deceptively Misdescriptive:
Those are a mouthful! But they’re important to consider if your trademark includes any wording related to a real place.
Primarily Geographically Descriptive refusals
The USPTO will refuse registration of trademarks that are primarily geographically descriptive.
They’ll find this if the following are true:
- the primary significance of the trademark is a generally known geographic place
- the products or services originate in the location identified in the trademark; and
- consumers are likely to believe that the goods or services originate in the geographic location identified in the mark.
That can be difficult to get around, unless the mark is determined to have acquired secondary meaning. Secondary meaning is established when the geographically descriptive term is primarily associated with a product, instead of the location.
This can be very difficult to prove, so it’s important to be careful when registering trademarks that include any geographical names.
The USPTO must refuse registration of trademarks that are determined to be primarily geographically deceptively misdescriptive.
As an example, check out this trademark filing for BIG EASY GAMES, which as of the date of this post, is currently awaiting a response. The examiner rejected the application due to the fact that the “Big Easy” is a term for a certain part of Louisiana, and the trademark applicant was in fact located there. Because of this, it was considered “Primarily Geographically Descriptive” and rejected.
For those paying attention, the “Games” portion of the trademark falls under “merely descriptive,” as well.
Primarily Geographically Deceptively Misdescriptive refusals
This can be even tougher to parse out than the last one! Let’s break it down.
A mark will be found to be primarily geographically deceptively misdescriptive if the examiner finds:
- the primary significance of the trademark is a generally known geographic location
- the products or services do not originate in the place identified in the trademark
- purchasers are likely to believe that the products or services originate in the geographic location identified in the mark
- the misrepresentation is a material element in a significant portion of the buying decisions.
For either primarily geographically descriptive or primarily geographically deceptively misdescriptive marks, the geographic term may be a continent, country, state, city, region, locality, street or a nickname.
I think the best way to illustrate this is with an example:
A company that made wallets and other accessories tried to register the trademark “JPK PARIS 75,” but the products were actually made by a company based in Florida. The court wouldn’t allow it, because it could deceive customers as to where those goods were actually coming from.
There have been other cases where clothing and accessories designers have used “PARIS” or other fashion centers in their product name, despite them not actually originating in those places. Because so much of fashion does originate in Paris, if you put Paris in your brand but don’t actually come from there, that’s potentially deceiving the public.
That’s what they’re trying to avoid here by refusing these trademarks.
Primarily Merely a Surname
A surname trademark refusal occurs when the USPTO refuses to register a mark because the mark is primarily a last name.
This can be tough to overcome.
However, if a surname has attained “secondary meaning” or an “acquired distinctiveness” the USPTO will register the mark. Secondary meaning is established when the last name is primarily associated with a product, as opposed to the person. Examples of trademarked surnames with the required association include McDonalds, Bissel, and Ford.
Occasionally, the USPTO views a rare last name as not having the “look and feel” of a surname and will grant the application without secondary meaning. However, in other cases, the USPTO views the rare surname as still looking and feeling like a surname and still rejects the application, even though the actual number of people with that surname is very rare.
Additionally, the USPTO considers if the surname has any meaning in a foreign language. If the USPTO believes an American purchaser would understand the mark to be a last name rather than a translation, they will still reject the application.
As an example, check out this abandoned application for HITCHCOCK GAMES, for video game software. Since the trademark is primarily a surname, it was rejected and then abandoned due to a lack of response.
Interestingly enough, in their first response, Hitchcock Games stated that “The name Hitchcock Games is being used as a video gaming company to produce video games by the independent video game programmer Shawn Hitchcock. The single member LLC first began making games using the company name SKH Apps LLC. in 2010. However, the public, i.e., gamers and youtubers began to recognize these games as being made by Shawn Hitchcock instead of associating it with a cohesive company association. The company is starting to expand and produce more video games, and therefore, last year decided to find a more memorable cohesive name to have the public attribute and recognize the games made by and under the direction of Shawn Hitchcock.”
This argument wasn’t persuasive – in fact, it’s not really an argument at all, but rather just an admission that it is actually just the owner’s surname. Had they stuck with “SKH Apps” they may have had better luck!
Falsely suggest a connection with a person (dead or alive)
The next main reason that the USPTO will refuse registration of a mark that consists of some wording that falsely suggests a connection with a person (dead or alive), institutions, beliefs, or national symbols.
A mark will be found to falsely suggest a connection with a person if:
- the mark is the same as, or a close approximation of, the name or identity previously used by another person or institution;
- the mark would be recognized as such, in that it points uniquely and unmistakably to that person or institution;
- the person or institution named by the mark is not connected with the activities performed by the applicant under the mark; and
- the fame or reputation of the person or institution is such that, when the mark is used with the applicant’s goods or services, a connection with the person or institution would be presumed.
The USPTO will refuse registration if the mark is determined to be a nickname or an informal reference to an entity’s identity, even names created by the public.
One interesting example of this is with the JOE EXOTIC application, for games and other goods.
Failure to Function as a Mark – the mark fails to indicate the source of goods or services:
Under US trademark law (called the “Lanham Act”), trademarks must serve as a source indicator. This means that it literally indicates what the source of the related goods and services is, and distinguishes it from those of other sources.
The USPTO will refuse registration for marks they determine fail to function as a trademark because they do not act as a source indicator.
Essentially a refusal on these grounds means that an examiner determined the applied-for mark does not tell consumers about where the goods or services come from.
As an example, check out this refusal for the mark QUARTER UP, for computer game software.
The specimen that was uploaded only seems to use the QUARTER UP mark in the copyright notice, which wasn’t enough to show its usage as a trademark. The mark has since been abandoned.
In overcoming such a refusal, the challenge is to show the USPTO that such a mark is capable of indicating source.
In addition to a refusal for the reasons above, there is a high likelihood that marks consisting of a message or a well-recognized and widely used concept or sentiment that would not be understood by the public to be a source indicator, will be rejected on the grounds that it fails to function as a trademark. This is because the trademark could point to lots of sources, not just your company.
Dealing with a trademark refusal?
If your trademark application has been refused, my firm may be able to help. I charge a flat fee of $400 to deal with “procedural” office action refusals and $800 for “substantive” refusals (like the ones on this post).
Head over to the Contact page to contact me and we can figure out a way forward to get your trademark application approved!
I’d like to thank my law clerk, Jillian Fries, for her help in pulling together this article! I couldn’t have done it without her great research and writing.