Keep in mind that not every initial application for a trademark will be granted approval. The United States Patent and Trademark Office (USPTO), specifically the examining attorney assigned to your trademark application, can issue an Office Action outlining the substantive reasons for trademark refusal of your application. This brings us to the question: What are the possible substantive reasons that your trademark application can be refused?
Likelihood of Confusion
Keep in mind that the USPTO will conduct a search of its database for conflicting marks only after an initial application has been filed. The examining attorney will determine whether your trademark being applied for has a similar one either still pending or already registered in the USPTO database. The process can take several months so patience is necessary.
The marks and the related products and/or services between your mark and the marks of other entities don’t have to be exactly the same for conflict or confusion to be considered. Instead, it’s considered sufficient if both the marks and their related products and/or services are similar in nature. The similarity should be such that consumers will likely mistakenly believe that both of them come from the same source.
The similarity can be on anything from sound and appearance to meaning. These can include phonetic equivalents, T.J. Chicken and Tee-Jay Chicken; similar appearance even when one uses another stylized; and meaning like “Lupo” and “Wolf” with both having similar images.
The USPTO’s examining attorney will also refuse trademark registration if it merely describes a quality, ingredient, function, characteristic, purpose, or feature of the product and/or service. For example, the mark “Creamy Yogurt” or “World’s Best Bagels” are unacceptable because these merely describe the products instead of being a distinctive brand.
The mark registration application will also be refused if the mark itself misdescribes a quality, ingredient, function, characteristic, purpose, or feature of the product and/or service; and the misrepresentation being conveyed is possible. Examples include “THC Tea” for tea-based beverages without THC.
Both the merely descriptive and deceptively misdescriptive grounds for refusal also applies to primarily geographical circumstances. There are several instances when it happens including:
With these strict requirements, you are well-advised to hire an experienced trademark attorney and consultant so that your initial application will have a higher chance of being approved.
For details of the trademark registration, please contact us for free consulation.
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