3 Main Reasons Trademark Applications Get Rejected
According to the latest data from the Trademark Office, more than half of trademark applications get rejected. (56.6%, to be exact.)
Source: Trademarks Data Q3 2024 at a glance
And in my… hmm… 15 years (!) as a trademark lawyer, I’ve found there are THREE main reasons trademark applications get rejected.
That’s what I’m covering in today’s post — the three common reasons why trademark applications get rejected (and how to avoid those mistakes).
I’m Maria Spear Ollis, aka The Lunar Lawyer, and I’m going to shine some light on the three main reasons why trademark applications get rejected.
Reason 1: There’s another mark that’s too similar to yours
AKA: “Likelihood of Confusion”
In other words, your trademark is a *little* too close to another trademark that’s already in the Trademark Office database.
When you file your trademark application, an Examiner reviews your application and does his own little search of the Trademark Office database.
What’s he looking for? Other trademarks like yours, filed in connection with categories similar to yours.
The trademark doesn’t have to be an exact “hit” in order to cause problems.
Nor do the goods/services. (I’ve seen applications get rejected for jewelry because of a similar trademark used in connection with cosmetics.)
How to avoid this: Due diligence, baby. Similar marks are exactly we usually uncover during the “trademark search” phase before we file a trademark application, so it’s a big mistake not to run a search before filing!
Reason 2: Your trademark does too good of a job describing what you do.
AKA: “Mere descriptiveness.”
Generally speaking, if your trademark simply describes an ingredient, quality, characteristic, function, feature, or purpose of your business… you’re going to get hit with a descriptiveness rejection.
Now, it’s possible to have, and register, a descriptive trademark. (Hello, HomeGoods; Sports Authority; Digital Course Academy; B-School… need I go on?)
But in terms of getting rejected, you usually have options. And those options are:
Prove you’ve been using your descriptive trademark for more than five years; or, if you can’t do that…
Amend your trademark to the “Supplemental” (aka secondary) register. It’s not as fancy as the regular “Principal” trademark register, but it has some benefits, too. (For more info about the supplemental register, I went into more detail here).
BONUS: Descriptiveness has a sister — “Failure to function.” That’s when your trademark is SO common, such a widely-used or searched name or phrase, that the Examiner says “this isn’t actually a trademark at all.”
How to avoid this: Hindsight is 20/20, and maybe it would’ve been helpful to know about this descriptiveness thing, y’know, before you chose your brand name. It’s hard to avoid after you receive one of these types of rejections. But knowing your options for a response helps!
Reason 3: Your description doesn’t match your actual use.
AKA: Amend identification of goods and services
Maybe you DIY’d your description. Maybe your dad’s lawyer friend (who practices divorce law) did you a “solid” and filed the application for you.
Either way, when you receive this type of rejection to your trademark application, the Examiner is basically saying “your description doesn’t exactly match how you’re actually using your trademark.”
This is a biggie, because there are usually no re-dos in terms of ADDING services to an existing application. You can take away or delete stuff, but you can’t add.
How to avoid this: The BEST way to avoid this… work with a trademark lawyer. I know, I know.. you knew I was going to say that. But it’s true! You want that ID of your goods and services to be spot on because, like I said, there are no do-overs. The second-best way to avoid this is to just make absolutely sure that the description on your trademark application absolutely matches the way that you’re using your trademark IRL.
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