A trademark is a word, phrase, design, or expression that is recognizable to the extent that it identifies the source of a good or service. Taking steps to register your trademark with the U.S. Patent and Trademark Office’s (USPTO) federal registry is the only way to obtain a legal nationwide presumption that you are the proper owner of the mark. However, registering your trademark is not always a straightforward or easy process. In some cases, you may even have your trademark registration application rejected. Fortunately, you may be able to remedy a trademark registration application if USPTO has rejected it.
One common reason that USPTO rejects trademark registration applications is an assessment that it likely would be confused with another existing mark. In making this determination based on the totality of the evidence, the USPTO weighs what it considers to be the most important factors. These factors include the relation between the goods or services, whether there is competition between the goods or services, and the likeness of the two marks with respect to appearance, meaning, and sound. In this case, you should work on coming up with another proposed trademark. This time, however, you should conduct a search for conflicting marks before you even file.
Another common reason for USPTO rejection is that the mark is merely descriptive of the goods or services with which the mark is associated, or the mark is deceptively misdescriptive. This reasoning stems from the fact that the USPTO is reluctant to give a person or entity the exclusive ability to use a commonly used word or phrase, simply because it is descriptive of the goods or services. Also, the word or phrase may misrepresent the product in some way. Again, you typically will need to pick out another mark that does not use a common word or phrase and that does not misrepresent the goods or services.
At Heit Law Group, P.C., we are dedicated to helping you build the business that you envision, one step at a time, including the procurement of any trademark applications that are needed. We know how to evaluate your situation, explore your options, and provide you with the strongest legal strategy possible to get your business off the ground, or to continue growing your existing business. Contact your California business development attorney today and set up an appointment to speak with us right away.