Seattle Trademark Lawyer

The U.S. Patent and Trademark Office can deny your application for federal trademark registration for any of the reasons stated in Section 2 of the Trademark Act, 15 U.S.C. § 1052.

There are about twenty. However, you can forget about most of them. For practical purposes, the main ones to worry about are: likelihood of confusion, mere descriptiveness, deceptive misdescriptiveness, primarily merely a surname, and unlawful use. These objections are summarized below. 

• Likelihood of confusion. Frequently, the most tricky objection to consider is whether your mark is confusingly similar to a prior filing. This mainly means that your mark is too similar to the mark reflected in a prior-filed application or registration, in the context of the associated goods and services, such that ordinary consumers would likely, or probably, mistakenly believe that your goods or services come from the prior filer. This includes both identical trademark matches, as well as close variants. You even might have superior rights in your mark because you used before the cited prior-filer, but the USPTO still will deny your application if someone else filed before you. There are potential ways around this objection, but that’s the basic gist.
• Mere Descriptiveness. A descriptive trademark immediately conveys information about the good or service being sold in connection with the mark, e.g., SEATTLE’S BEST COFFEE or SPEEDY AUTO GLASS. Such marks leave nothing to the imagination. The USPTO objects to descriptive trademarks because they primarily provide information, rather than identify the maker or provider of the branded good or service. In other words, the mark mainly provides information, rather than functions as a trademark by identifying the source. Longstanding use can convert a descriptive (and unprotectable) trademark into a protectable and registrable one, but doing so usually requires at least five years of “substantially exclusive,” continuous use. Otherwise, your application to register such a mark will be denied (though it may be possible to obtain registration on the Supplemental Register).
• Deceptive Misdescriptiveness. If a shirt sold under the brand COTTON actually contains cotton, you should expect the USPTO to object based on grounds of descriptiveness. However, if the shirt doesn’t actually contain cotton, the mark wouldn’t be descriptive. The examiner instead would likely object that the mark is deceptively misdescriptive, i.e., that it claims to have an attractive attribute, but it actually does not. In an effort to protect consumers, such marks cannot be registered.
• Primarily Merely a Surname. No one should have a monopoly over using a surname (last name) as a trademark. Therefore, if consumers are likely to perceive a mark as being “primarily merely a surname,” the examiner will object. The analysis includes the mark as a whole, so including other word or design elements can sidestep the objection. So can longstanding use, which is why MCDONALD’S and FORD can be registered.
• Unlawful Use. Don’t forget that even though marijuana might be legal in your state, it’s still not legal at the federal level. Same with many CBD uses. If your good or service isn’t kosher under federal law, it’s a waste of money to apply to register your mark with the USPTO. Federal laws could change, but until they do, violating one can prevent your mark from being registered with the feds (though state registration could still be possible).

There are other reasons why your application to register a trademark with the USPTO could be denied, but in my practice, these represent the most common reasons. There are some smart workarounds — both before an application is filed, and after an examiner objects — so it often pays to work with a trademark lawyer. However, knowing the basic reasons why a mark can be refused registration is a good first step.