What are the common reasons a trademark is rejected?
Frequently asked questions
Oftentimes no, because it could create confusion.
But if the other mark is used for different products or services, it might be possible because consumers may not be confused about who sells what.
For example, Delta Dental, Delta Air Lines, and Delta Faucet Company coexist as business names because the products are different enough to prevent consumer confusion.
Yes. The USPTO allows one trademark—that’s one name, one logo, or one slogan—per trademark application.
You can register a logo that includes your business name, but then the design and the text together are considered one trademark. If you want them protected individually, you’ll need to file two applications as you compete the trademark registration process.
Depending on what you sell, trademark registration can involve multiple classes or just one class. The USPTO puts all products and services into 45 classes. If you own a restaurant, you provide a service in class 43 (food services), but if you also sell cookbooks and teach cooking at the restaurant, you may also want to register in class 16 (paper goods) and class 41 (education and entertainment services). Usually, your trademark protection is limited to the classes listed in your application.
Ideally, the trademark application process—including time waiting to hear back from the USPTO—takes six to 12 months if you’re using your trademark in commerce.
The USPTO will review your application within a few months, and then either send an office action with questions or concerns, or approve your trademark for publication. If your trademark is published and there are no objections by the public within 30 days, you’re done with registration and you officially have a registered mark.
If you’re not yet using your mark in commerce, the trademark application process can take longer. After making it through the previous steps, the USPTO will grant a Notice of Allowance, which says they’ll register your mark once you provide proof of use in commerce through a Statement of Use. Once that’s submitted and approved, your mark is officially registered.
Yes. The USPTO’s examining attorney might reject your mark if there’s a chance consumers could confuse it with another trademark—for example, if your business name sounds too similar to another business name in the same industry. Involving an attorney in the trademark registration process can help avoid some of these challenges.
You can use a ™ on your logo while you pursue the trademark application process. Doing so lets others wishing to trademark the same thing know that you intend to pursue a trademark. Once you’ve completed trademark registration and your trademarks are approved, you can replace the ™ with the registered trademark symbol, ®.
Secure Your Registered Trademark in 4 Easy Steps
To help you prepare for your filing, please begin to gather the following information: Name of the trademark applicant (either a business entity or individual), Address of the applicant, State the business entity was incorporated and/or the Country of Citizenship of the applicant, and an email address to have on file. The information required concerning the trademark itself consists off the type of trademark (name, logo, slogan), the description of the trademark, the products/services sold under the banner of the trademark, and the extent to which (if any) the trademark has already been used in conjunction with the sale of products/services listed in the application in interstate commerce. We help you understand the nuances of each part of this application submission process and help you obtain the broadest protection for your trademarks available.
Remember, this analysis considers not only the similarly of the marks but also the products/services listed under the marks. For this reason, two companies in entirely different industries have the right to use the same exact trademark to brand their disparate services. Our trademark attorneys will consider multiple appearance/sound/spelling variations of your mark to determine your mark’s availability.
Upon receipt, the examining attorney will vet both the procedural aspects of the application (business entity of applicant, description of the products/services etc.) and the substantive aspects of the application (is the mark too similar to an existing trademark, is this present mark merely descriptive of the products sold etc.) and decide and decide whether to allow the application through or reject the application with an Office Action. In the event that the examining attorney does in fact issue an Office Action, the applicant must respond to it within 6 months of receipt or the application will be canceled and “abandoned”. Our trademark attorneys will assist you in evaluating the trademark office action and drafting a professional response. Once the trademark is finally preliminarily accepted by the USPTO, it is published to the Official Gazette for a 30 day period where an opposing party can make the claim that the issuance of your trademark would be detrimental to their own trademark. If no one opposes your mark, you are on to the next and final step of the trademark registration process.