The Most Common Reasons a Trademark Gets Rejected

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Written By Brian T. Edmondson, Esq.

Hi, I'm Brian. I'm an internet entrepreneur & lawyer. I write about all things internet business & law.

Hey, it’s Brian. This article is for informational purposes and is NOT legal advice, cool? Onto the article…

There are many reasons a trademark will get rejected, however, the most common reasons include lack of distinctiveness, likelihood of confusion, merely descriptive, and/or they are generic.

Understanding why trademarks get rejected is crucial for any business aiming to protect its brand identity. A trademark is a unique symbol, word, or phrase that identifies and differentiates products or services.

However, not all trademarks make it through the registration process. Several factors are put into consideration before a trademark is accepted.

This ensures that trademarks serve their primary purpose: to help consumers identify the source of goods or services. Knowing these basics helps businesses avoid common pitfalls and successfully navigate the trademark application process.

The Core Reasons for Trademark Rejection

Many trademarks get rejected during the application process. Understanding why can save time and effort. 

Lack of Distinctiveness

A fundamental reason trademarks face rejection is their lack of distinctiveness. Distinctive trademarks identify the source of goods or services, setting them apart from others.

A trademark fails to function when it is too generic or descriptive without any unique elements. For instance, using common phrases or everyday language that broadly describes the products or services directly cannot be trademarked.

The goal is to have a mark easily identifiable by consumers as specific to your brand, not as a generic or common description of an entire category of goods or services.

See also: 5 Things You Need to Know About Trademarks

Likelihood of Confusion

Another critical reason for trademark rejection is the likelihood of confusion with existing trademarks. This happens when a new trademark is too similar to an already registered trademark in the same or related industry.

Factors considered include the similarity of the marks in appearance, sound, meaning, and the relatedness of the goods or services they represent.

If the trademark office determines that consumers might confuse the two brands, leading them to believe they come from the same source, they will reject the application.

Ensuring your trademark is unique and conducting a thorough search for existing trademarks in your industry can help avoid this pitfall.

Descriptive Terms

Using descriptive terms is one of the most common reasons a trademark gets rejected. These are words or phrases that simply describe the goods or services. For example, using “Sweet” for a candy store or “Fast” for a courier service is too direct.

Trademarks need to be distinctive to be approved. Descriptive terms fail to set a brand apart from its competitors because they need to have uniqueness.

The key is to choose a trademark that suggests rather than describes the qualities or characteristics of your goods or services, making your brand easily distinguishable from others in the market.

Generic Terms

Another significant obstacle to trademark registration is generic phrases. These are terms that are commonly used in the language to refer to goods or services.

For example, since “Milk” refers to a dairy product and “Bicycle” relates to bikes, these phrases are generic and cannot be trademarked. Since a generic term only labels products or services without identifying their source, it cannot be used as a trademark.

The trademark office denies these applications because, if approved, others would be prohibited from lawfully utilizing standard terms to describe their goods or services.

Violation of Public Morals

Trademarks that are offensive or violate public morals also face rejection. This includes marks that are obscene, scandalous, or disparaging to particular individuals, institutions, beliefs, or national symbols.

The rationale is to maintain societal standards and ensure that trademarks do not contribute to a hostile or morally questionable environment. For a trademark to be accepted, it must not only be distinctive and not confusingly similar to existing trademarks but also adhere to public decency standards.

This ensures that the trademarks represent businesses and products respectfully and appropriately.

Update: the Supreme Court has struck down this clause of the trademark act prohibiting these types of trademarks, but the USPTO may still find other grounds to deny the trademark.

Incomplete or Incorrect Application

A common reason trademarks get rejected is due to incomplete or incorrect applications. When applicants miss providing necessary details or submit wrong information, their application suffers. 

Essential elements like the declaration of intent to use the trademark, accurate descriptions of goods or services, and proper specimen submission are crucial. Every field in the application plays a role in its success. 

To avoid rejection, double-check your application for completeness and accuracy before submission. This careful attention ensures the trademark office has all it needs to assess your trademark correctly.

Failure to Respond to Office Actions

Ignoring or failing to respond to office actions is another critical mistake leading to trademark rejection. Office actions are official communications from the trademark office, requesting additional information or clarifying certain aspects of your application. 

They may highlight issues like potential conflicts with existing trademarks or queries about your application’s details. Not responding to these actions within the timeframe typically results in automatic rejection. 

It’s vital to address any concerns promptly and thoroughly. Engaging with the trademark office’s requests demonstrates your commitment to securing your trademark and helps move your application forward.

Avoiding Common Pitfalls with Registering Trademarks

To avoid common pitfalls in trademark registration, focus on creating a unique and distinctive mark. Steer clear of descriptive or generic terms and ensure your application is complete and accurate. 

Conduct thorough research to avoid conflicts with existing trademarks, and always respond promptly to office actions. Understanding what leads to rejections enables you to navigate the trademark application process more effectively. 

Remember, the goal is to have a trademark that stands out and is legally protectable, ensuring your brand’s identity is secure. Following these guidelines increases your chances of a successful trademark registration.

Frequently Asked Questions about Registering Trademarks

Here are some of the most common questions about trademark rejection.

How do you avoid refusal of trademark?

To avoid trademark refusal, ensure your trademark is unique and distinctive, conduct a thorough search to avoid conflicts with existing trademarks, and submit a complete and accurate application. Respond promptly to any office actions or requests for additional information.

What makes a trademark weak?

A trademark is considered weak if it’s too descriptive or generic, lacks distinctiveness, or closely resembles an existing trademark in the same industry. Strong trademarks are unique and memorable, immediately identifying the source of the goods or services.

What words Cannot be trademarked?

Words that are generic or descriptive without acquired distinctiveness cannot be trademarked. Additionally, names of places, surnames, or are also not eligible for trademark protection unless they have secondary meaning.