Applying for federal registration of trademarks is one of the smartest moves that a startup owner can make in the early stages of his or her company. Registering with the U.S. Patent and Trademark Office (USPTO) can be an especially effective way to protect a company’s brand; the ultimate purpose of building a brand is for consumers to associate your company’s products or services with its trademarks.
With that being said, the process for securing federal registration for your trademarks is somewhat complex. There are many strict requirements you must follow. In fact, a sizable chunk of trademark applications are rejected by the USPTO. Below, we’ve outlined four of the most common reasons why an application may be rejected.
1. Your trademark would create a likelihood of confusion with existing marks. This is perhaps the most common reason for an application rejection and goes to the heart of a trademark’s purpose. When consumers are seeking out a specific product, it’s unfair to expect them to spend a lot of time examining the product to make sure they are purchasing what they intend to purchase. If you are seeking a trademark for your dog food company, your application will be rejected if the proposed mark looks too similar to, say, the logo of a company that produces cat food. In addition to comparing your proposed mark to existing trademarks, the USPTO examiner will also compare it to marks that are pending approval. Similar marks have a greater chance of rejection if the underlying products or services are also similar.
2. Your trademark is the name, portrait, or signature of a living person. The USPTO will reject any proposed trademark that comprises one of the three items listed above unless the applicant has the written consent of the person in question. In a similar vein, your trademark application will not be successful if the “primary significance” of the mark is a surname. There is an exception for brands like McDonald’s because the public already strongly associates the brand name with the food offered by the fast-food giant.
3. The proposed trademark is geographically descriptive or deceptively misdescriptive. While it is sometimes a good idea to include the name of a city, region, or area in a brand name, keep in mind that the USPTO might reject that application. Unless the brand has a secondary meaning separate from the geographic location named in the mark (for example, Omaha Steaks is a federally registered trademark), then the application is likely to fail. Additionally, your application likely will be unsuccessful if your proposed trademark implies that the associated products or services originate from a different geographic location than they actually do. For instance, setting up a company in Indiana called “Bakersfield Taffy” would be considered “primarily geographically deceptively misdescriptive” by the USPTO.
4. Your trademark is merely descriptive. This reason is quite similar to the third reason in this list. Essentially, your application will be refused if the trademark “immediately describes an ingredient, quality, characteristic, function, feature, purpose or use” of your products or services. To illustrate, let’s say you applied for trademark protection for “Healthy Dog Chow” in connection with your dog food company. While it does a fine job describing your products, it is just that — descriptive. Absent any secondary meaning for consumers, this trademark is likely to be refused.
Integrated General Counsel Wants to See Your Brand SucceedThere are so many considerations that entrepreneurs must address when beginning their enterprise, and securing your intellectual property is one of the most important. Integrated General Counsel has been helping California business owners build and sustain successful businesses for decades, and we’d love to help you be our next success story. Contact our firm to set up a consultation with our legal team today!
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