Cecily Zamora
The United States Patent and Trademark Office (USPTO) may refuse to register a trademark on several grounds, including likelihood of confusion, ornamentation, and unlawful use in commerce. Unlawful use in commerce refers to commercial use that violates federal statutes, such as the distribution of controlled substances. If a trademark application is refused due to unlawful use, applicants may consider amending their application to the Supplemental Register or refiling with modifications to comply with legal requirements. Refiling the same trademark without addressing the issues that led to the initial refusal may result in duplicate application issues and potential rejection. Therefore, it is crucial to understand the specific grounds for refusal and make appropriate changes before resubmitting an application.
| Characteristics | Values |
|---|---|
| Grounds for refusal | Likelihood of confusion with a registered trademark, ornamentation, primarily geographically descriptive, deceptively misdescriptive, etc. |
| Refusal scenarios | Filing a second application for the same mark and goods/services, maximum number of extension requests reached and the mark hasn't been used, etc. |
| Amendment scenarios | When use of the existing registration has ceased, to preserve a long-registered trademark that has been updated, to avoid a refusal in the second application, etc. |
| Requirements for amendment | Changes must not be a "material alteration" or alter the "commercial impression" of the trademark |
| Lawful use | Commercial use that violates a federal statute cannot establish priority for trademark rights |
Explore related products
$7.99
$8.49 $10.53
What You'll Learn
Refusal on the Principal Register: descriptiveness of the mark
The United States Patent and Trademark Office (USPTO) will refuse to register a trademark on the Principal Register if it is "merely descriptive" of the trademark owner's goods and services. This means that the mark immediately describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services. For example, the mark "CREAMY" would be merely descriptive for yogurt, and the mark "WORLD'S BEST BAGELS" would be merely descriptive for bagels.
Trademark protection is not available for trademarks that are merely descriptive of the trademark owner's goods and services. Companies, therefore, spend a lot of time and money trying to find a balance between the strongest and most abstract marks. However, this can be challenging, as the difference between a descriptive and a suggestive mark is subtle, and reasonable people might disagree.
If a trademark application is refused on the grounds of descriptiveness, the trademark owner has several options:
- Appeal the examiner's refusal through office action responses and/or an appeal to the Trademark Trial and Appeal Board.
- Accept that the trademark is descriptive and provide evidence that it has "acquired distinctiveness" under Section 2(f) of the Lanham Act.
- Accept registration on the Supplemental Register.
- Abandon the application.
Registration on the Supplemental Register is a lesser option for descriptive marks that are in actual use. It grants more rights than marks that are not federally registered at all, including the right to use the registered trademark symbol. However, it does not provide nationwide constructive notice of the registrant's claim of ownership or priority of use nationwide.
To avoid a refusal on the grounds of descriptiveness, applicants should ensure that their trademark is not merely descriptive of their goods and services. This can be achieved by creating a strong and unique mark that conveys enough information for consumers to consider purchasing the product, while also being abstract enough to not immediately describe the goods or services.
Petitioning Power: Opposing New Laws and Your Rights
You may want to see also
Explore related products
![10 Cross Quality Intrepid Black Refills for Ion, Roadster, Vice, Penatia Gelicious, and Matrix Pens Gel Ink Refills [10 Pack Bulk Pack]](https://m.media-amazon.com/images/I/51BGIRIwbfL._AC_UL320_.jpg)
![10 Cross Quality Intrepid Blue Rollerball Refills for Ion, Roadster, Vice, Penatia Gelicious, and Matrix Pens. Gel Ink Refills [10 Pack Bulk Pack]](https://m.media-amazon.com/images/I/31ZKgHqaFKL._AC_UL320_.jpg)
Refusal due to likelihood of confusion with existing trademarks
Refusal of trademark registration due to likelihood of confusion with existing trademarks is a common issue. This occurs when a trademark application is too similar to an already registered or pending trademark for related goods or services. The USPTO will conduct a search for conflicting marks as part of the official examination of an application, and it is not necessary for the marks to be identical. Similarity in sound, appearance, or meaning, or a similar commercial impression, can be enough for a refusal on these grounds.
To avoid refusal, it is recommended that a comprehensive clearance search is conducted before submitting an application. This involves checking the USPTO database, state trademark registers, domain names, social media platforms, and online directories, to ensure your proposed mark is not identical or similar to an existing mark. If a conflict is found, it may be possible to include different goods or services in your application to avoid a duplicate filing.
If a likelihood of confusion is found between your application and an existing trademark, the examining attorney will refuse registration. You can then submit arguments and evidence to show that there is, in fact, no likelihood of confusion. You may also request suspension, which temporarily halts the examination of your application, pending the outcome of another matter. This option does not guarantee approval and may prolong the registration process, so it should only be considered if you have a valid reason and are confident of a positive outcome.
It is important to note that the existence of a mark that is confusingly similar to yours and used with related goods and services may bar registration of your trademark. Therefore, it is crucial to be thorough in your search for conflicting marks and take steps to prevent or reduce the likelihood of trademark refusal.
How to Get Multiple Warden's Laws Drops
You may want to see also
Refusal if the mark is for illegal goods or services
For a trademark to qualify for federal registration, the mark must be used lawfully in interstate commerce. If the goods or services are illegal, the mark will not be registered. Commercial use that violates federal law cannot establish priority for trademark rights. The United States Patent and Trademark Office (USPTO) and Board confront this issue with applications related to controlled substances, such as cannabis. In such cases, the applicant cannot allege a bona fide intent to make lawful use of the trademarks.
The lawful use in commerce issue was addressed in the precedential decision of Scott Stawski v. John Gregory Lawson, where the applicant sought a concurrent use registration for wines. The applicant claimed that he used the mark in commerce by adopting it as an assumed business name and using it in a domain name. However, the sale of wine in commerce requires a Certificate of Label Approval (COLA) from the US Department of the Treasury Alcohol and Tobacco Tax and Trade Bureau. Since the applicant did not acquire this certificate, the use was not considered lawful.
Trademark examining attorneys are trained not to question an applicant about the legality of their use. Therefore, the issue of lawful use typically arises only in cases with priority disputes. While trademark registrations may be pursued in cannabis-friendly states, intent-to-use applications are not accepted at the state level. However, common law rights will develop once the mark is used in commerce.
If your trademark application is refused, you can refile it by including different goods or services not identified in your first application. This new filing may not violate the rule against duplicate registrations. However, if you have already filed the maximum number of extension requests and have not used the mark on the identified goods or services, your second application for the same mark and goods or services will be rejected if the USPTO has already taken action on the first application.
Public Interest Law: Criminal Defense's Intersection
You may want to see also
Refusal if the mark is for wine without a Certificate of Label Approval
In the United States, for a trademark to qualify for federal registration, the mark must be used lawfully in interstate commerce. If the goods or services are illegal, the mark will not be registered.
Wine, as an alcoholic beverage, is subject to strict regulations. One such regulation is the requirement of a Certificate of Label Approval (COLA) from the U.S. Department of the Treasury Alcohol and Tobacco Tax and Trade Bureau (TTB). This certificate verifies the information on the wine label, including the volume of wine, a government warning about the risks of alcohol consumption, and a sulfite declaration if applicable.
The acquisition of a COLA is critical for wine producers seeking trademark registration. The Trademark Trial and Appeal Board (TTAB) has confirmed that the failure to obtain a COLA constitutes a failure to satisfy the "lawful use in commerce" requirement for trademark registration. This means that even if a wine producer has used their mark in commerce, they cannot claim rights to the trademark if they have not obtained the necessary COLA.
In the case of Scott Stawski v. John Gregory Lawson, Stawski sought a trademark for wines but had not obtained a COLA. The TTAB affirmed the refusal to register Stawski's trademark, stating that he could not claim a bona fide intent to make lawful use of the trademark without the required certificate.
Therefore, it is essential for wine producers to obtain a COLA before seeking trademark registration. This ensures compliance with federal regulations and establishes lawful use in commerce, which is a prerequisite for trademark protection.
Practicing Law: PhDs and Legal Careers
You may want to see also
Refusal if the mark is primarily ornamental
Refusal of a trademark application on the grounds of ornamentation is a common issue. The objective of a trademark is to act as a source indicator, distinguishing the applicant's goods or services from those of others. If the mark is deemed to be merely decorative, it will be refused by the United States Patent and Trademark Office (USPTO).
The USPTO will consider the size, placement, and dominance of the proposed mark in relation to the goods or services. For example, on clothing, small designs or discrete wording located on the pocket or breast area of a shirt may be recognised as trademarks. However, larger designs or slogans prominently displayed across the front of a t-shirt are more likely to be considered ornamental and not indicative of the source. An example of this is the slogan "BLACKER THE COLLEGE SWEETER THE KNOWLEDGE" which was deemed to be primarily ornamental.
To avoid refusal on these grounds, an applicant must demonstrate that the mark serves as an identified secondary source. This can be proven by showing ownership of a US registration on the Principal Register of the same mark for other goods or services, non-ornamental use of the same mark in commerce on other goods or services, or ownership of a pending use-based application for the same trademark for other goods or services, used in a non-ornamental manner. For instance, a college using its name in connection with educational services, and then applying to use the mark on the front of a sweatshirt, would qualify as a secondary source.
Additionally, if the proposed ornamental mark is not inherently distinctive, it may still be registered if it has acquired distinctiveness. This can be demonstrated through the use of the TM symbol adjacent to the mark, increasing the likelihood that consumers will perceive it as a trademark.
If a refusal is made on the basis of ornamentation, it is important to respond to the Office Action by addressing all four factors considered by the USPTO Examiners. These factors are outlined in Chapter 1200 of the Trademark Manual of Examining Procedure (TMEP).
Law Studies via IGNOU: A Viable Option?
You may want to see also
Frequently asked questions
A trademark refusal occurs when the examining attorney identifies grounds for refusal during the review of a trademark application.
Common grounds for trademark refusal include likelihood of confusion, ornamentation, and the mark being merely descriptive or deceptively misdescriptive.
Yes, it is possible to refile a trademark application that was refused due to not being in lawful use. However, you may need to make changes to address the issues that led to the initial refusal.
To avoid refusal, ensure that your trademark is used lawfully in interstate commerce and complies with any special requirements, such as obtaining necessary certifications or permits.
If your trademark application is refused, you may have the opportunity to respond to the refusal and address the issues raised by the examining attorney. In some cases, you may be able to amend your application or refile with modifications to address the refusal reasons.
