According to the U.S. Patent and Trademark Office (USPTO), one in five trademark applications will fail their first examination by an examining attorney. Why is that? First, it helps to understand just how trademark applications are reviewed by the USPTO.
The USPTO assigns each new trademark application to a specific examining attorney. This examining attorney reviews the application under the Trademark Act of 1946 (15 U.S.C. §1051 et. seq. (the “Lanham Act”) and the Trademark Rules of Practice (37 C.F.R. Section 2.1 et. seq.). They also compare the application to all pending trademark applications and other criteria before issuing either an acceptance or refusal of the application. If your trademark application is refused, this refusal is known as an Office Action.
Trademark applications are lengthy and require careful preparation, but even the most diligently drafted application may be initially rejected by the USPTO.
While there are many reasons why an application may be denied, these are the top five reasons we see the most here at The Fried Firm:
1. KNOWING WHAT CAN (AND CANNOT) BE TRADEMARKED
There are many things that are not suitable for a trademark. This includes an idea; a function (processes are covered under patents); a flag; certain ornamentation or decoration; portrait or signature of a living person or deceased U.S. President; falsely suggesting a connection with a living or deceased person, institution or belief; a surname being associated with the trademark instead of the product (think: McDonald’s).
The Lanham Act also prohibits and gives the USPTO permission to cancel any registered trademarks considered scandalous, disparaging, or immoral. However, as of June 24, 2019, the U.S. Supreme Court in Iancu v. Brunetti ruled the “Lanham Act’s prohibition on registration of immoral or scandalous trademarks violates the First Amendment.” While it’s too early to tell, the Supreme Court analyses used to strike down the Disparagement Clause and Immoral or Scandalous Clause of the Lanham Act could be invoked to further erode several other provisions in the Act. This could leave more wiggle room for pending trademark applications.
2. TIMING
Waiting until your product has launched before seeking a trademark can be a big problem. By waiting to file your trademark application, you run the risk of another party filing a trademark for the same name. Since the USPTO only recognizes which party first filed to claim ownership of a trademark name, this can seriously hurt your branding.
3. LIKELIHOOD OF CONFUSION
One of the most common rejections is the probability of trademark confusion. “Likelihood of confusion” means that the USPTO believes it would be possible for consumers to align your trademark application with that of an existing, registered trademark because the name is similar and/or the trademarks are for related or similar classes of a goods or services. This refusal does not require actual confusion, but just the likelihood thereof.
A great example is the recent lawsuit between Kraft Cracker Barrel Cheese and Cracker Barrel Old Country Store foods. The Cracker Barrel Old Country Store restaurant was not in a similar class as Kraft Cracker Barrel Cheese until it decided to sell foods, like cheese and ham, online and in stores. Ultimately, the Seventh Circuit sided with Kraft (Kraft Foods Group Brands LLC v. Cracker Barrel Old Country Store, Inc. et. al., 735 F.3d 735 (7th Cir., Nov. 14, 2013)), with the restaurant being limited to selling food products in its restaurant locations but prohibited from selling that same food in grocery stores.
If similar marks are not in related or similar classes, then they can co-exist (e.g., Lincoln the car and Lincoln the financial services company). Engaging a skilled trademark attorney to do a thorough trademark search before filing your application is the best way to avoid this pitfall.
4. MERELY DESCRIPTIVE AND DECEPTIVELY MISDESCRIPTIVE
A merely descriptive name is commonly rejected because it does not identify and distinguish the source of products or services (think: “Fast Delivery”, “SunTan Oil”, or “Cold and Creamy Ice Cream”). A deceptively misdescriptive mark is, essentially, false advertising. For example, TITANIUM was refused registration for recreational vehicles that did not contain titanium (Glendale Int’l Corp. v. USPTO, 374 F. Supp. 2d 479 (E.D. Va. 2005)).
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5. GEOGRAPHICALLY DESCRIPTIVE AND GEOGRAPHICALLY DECEPTIVELY MISDESCRIPTIVE
Similar to the “merely descriptive” refusal, this category relates to the accuracy of the product or service origin (e.g., Wisconsin Cheese; Florida Oranges; Idaho Potatoes; Vidalia Onions (which is the State of Georgia if you were wondering); or Washington State Apples). A mark is geographically deceptively misdescriptive if it primarily falsely indicates geographic origin (e.g., naming any Russet Potato as Idaho Potatoes). Furthermore, registration will be refused for a mark on wine and spirits, including translations, for a place other than its true origin.
All is not lost if your trademark application is denied! The USPTO gives applicants six months to respond to an Office Action. While we recommend hiring an experienced trademark attorney when filing your trademark application, The Fried Firm can still help those who submitted a trademark application on their own and then received an Office Action. If you have not yet filed your trademark application, a trademark attorney can research and analyze your trademark ideas before filing in order to understand the mark’s chance of success of registration.
