Two common reasons for trademark application rejection to avoid with careful planning.
Conflict with Prior Registration – Likelihood of Confusion
One common reason that US trademark applications are rejected by the USPTO is a conflict with a prior trademark registration. This is a so called 2(D) refusal. A conflict exists if the application is “likely to cause confusion” with the prior registration. Courts and the USPTO Board have issued many rulings regarding what constitutes likelihood of confusion. The two most important factors are a) similarities in the trademarks and b) similarities in the goods/services. A conflict can exist even though the trademarks are not exactly the same and even though the goods/services are not exactly the same.
The trademark office attorney examining the application will perform a detailed and specialized search of the database. They will look for phonetic equivalents. Those are words that sound the same but are spelled different. They will look for prior registrations that contain all or part of the applied for trademark. They will look at trademarks with similar goods/services.
Comparison of each set of trademarks is unique. The analysis is subjective. Reasonable minds can differ.
Many other factors can come into play. For example, if the trademark is unique, then the trademark office will give the prior registration broader protection. If the trademark is a common word or suggestive of the goods/services, the trademark office will protect the prior registration more narrowly.
Some applicants file their application and cross their fingers that a conflict does not exist. The trademark office may not review the application for 9 or 10 months. An applicant may need to know sooner than 9-10 months whether the trademark is likely to be approved. The applicant may want to manufacture branded products, buy domain names, or pay for a marketing campaign. Knowing about conflicts before filing is useful.
Clearance Study
A USPTO clearance study can help the applicant understand whether the trademark is available and avoid common refusals. Obstacles come in different sizes. Because of the many factors and nuances, a clearance study should be performed by an experienced professional.
IMPROPER SPECIMEN OF USE
The second common reason for rejection of a trademark application an improper specimen. To register a trademark, the applicant must submit an example of how the trademark is used. The application can be filed before launch, an “intent-to-use” application, but proof of use must eventually be filed.
Brands which are primarily e-commerce sometimes have issues with appropriate use of trademarks. The trademark office generally prefers if trademarks are placed on goods or its packaging.
For clothing, that means on a hang tag, label, or other packaging. Use of branding on social media often does not meet the USPTO requirements. A website can be a good example of use for goods, but only if the website is a point of sale or has ordering information.
Trademarks used for services should be used either to advertise the services or when rendering the services. A fitness center, which is a service, may use the trademark on signage at the gym and on a website. A software company can use its brand on its website to advertise the software.
When a trademark is for a particular serve offered under an umbrella or house trademark, care should be used to distinguish the product from the house mark.
Branding Strategy to Avoid Trademark Rejection
With careful planning, a trademark application can be drafted to avoid rejection. The process starts with the branding strategy and a clearance study. Time is of the essence. The trademark office assigns priority based on filing date. The sooner the better.
