Common Grounds For Refusal Of A Trademark

There are numerous grounds for trademark refusal. See Chapter 1200 of the Trademark Manual of Examining Procedure ("TMEP") for a complete list of the substantive grounds for refusal of a trademark application. A refusal of a trademark will occur in the Office Action issued by the Examining Attorney. The Examiner assigned to the application will set forth the refusal or possibly multiple refusals, and explain the basis and cite case law to support his or her position. As the applicant, you or your trademark counsel will be given an opportunity to submit a response to the refusal. This page will review the most common grounds for trademark refusal.

Likelihood of Confusion

As part of the United States Patent & Trademark Office's ("USPTO") review of a trademark application, it will conduct a search for marks that are conflicting. The proposed mark in the trademark application will be considered "conflicting" if it causes a "likelihood of confusion" with a registered trademark. The Office Action will cite the registered mark(s) and explain that the proposed mark resembles the cited mark, and a potential consumer would be confused, mistaken or deceived as to the source of the goods and/or services of the applicant and registrant. A determination of likelihood of confusion is based on the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973). See our web page entitled, Likelihood of Confusion Refusals - 2(d) Refusals, where we set forth the various factors relevant to this analysis. The principal factors considered are the similarities of the trademarks and the commercial relationship between the goods and services. Typically likelihood of confusion will be found 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.

Merely Descriptive and Deceptively Misdescriptive

If a mark immediately conveys a quality, purpose, function, feature, characteristic, ingredient, or use of the goods or services it will be deemed merely descriptive and refused on the principal register of the USPTO. If a trademark misdescribes a quality, purpose, function, feature, characteristic, ingredient, or use of the goods or services, and the misrepresentation would be credible or plausible to consumer, the mark would be refused as deceptively misdescriptive. Keep in mind that one objective of trademark law is to protect consumers from deception and confusion.

Primarily Geographically Descriptive and Primarily Geographically Deceptively Misdescriptive

Regarding geographically descriptive refusals, the USPTO will evaluate (1) if the primary significance of the mark is a generally known geographic location to consumers; (2) consumers are likely to believe that the goods or services originate in that geographic location; and (3) the goods or services do originate from that geographic location. If the three prongs are met then the mark will be refused on the principal register.

To be refused on the grounds of geographically deceptively misdescriptive, prongs (1) and (2) in the prior paragraph must be met. Then in addition, the goods or services do not originate in the geographic location named in the mark; and the misrepresentation would be a material factor in a significant portion of the relevant consumers' decision to purchase the goods or services. For example, TRUE FLORIDA may be geographically deceptively misdescriptive if the mark is used in connection with oranges not originating from Florida.

Primarily Merely a Surname

A trademark will be refused on the principal register if the primary significance of the mark is a last name or surname.

Ornamentation

An Examining Attorney will refuse a mark if it does not function as a trademark to distinguish the applicant's goods, but instead is merely a decorative feature of the goods. For example, larger letters, designs or slogans if displayed across the front of a T-shirt, sweatshirt, or hat may be perceived as primarily ornamental or informational matter and not a source indicator.

The best way to avoid a trademark refusal is to conduct a trademark clearance search, and to consult with trademark counsel prior to filing your application with the USPTO. Please feel free to contact our office for a courtesy consultation.