Trademark

Why my US Trademark is NOT registrable

Once you have submitted your US trademark application to the United States Patent Trademark Office (USPTO) it will be reviewed by the examining attorney for acceptance. In some cases it maybe that your trademark cannot be registered. This can be avoided by knowing what a refusal is based on. The main reasons for refusals are likelihood of confusion and descriptiveness.

Likelihood of confusion

Likelihood of confusion can be broken down into three parts. They are sound, appearance and meaning of the trademark. If two trademarks sound the same but are spelt differently it cannot be registered. This is because consumers will believe that the goods/services come for the same source. Similarly, with the appearance of a trademark. Although one maybe stylized and have a better chance of registration compared to the standard character design in certain cases it may still be considered as similar and cause confusion to consumers because they look the same. Trademarks can be spelt in different languages and mean the same thing. This cannot be registered because in certain cases it causes the same mental reaction upon reading it.

A trademark will not be considered to cause confusion if they are in the same classification. What is important is the goods and services provided by the trademark and whether they are related. For example, registering a trademark name Mac Donalds will cause confusion because they will think it is the fast food restaurant Mc Donalds.  A consumer would perceive this as similar and coming from the same source as a result causing confusion to the public.

Descriptiveness

Descriptiveness is broken down into three categories. The mark can be either merely descriptive, deceptively descriptive or geographically descriptive. Merely descriptive means that you are describing your products by way of your trademark. For example, ‘World’s best ice creams’ this is descriptive of ice creams. Deceptively descriptive is when you describe your goods or services by way of your trademark and it is not as it is presented. For example, if you decide to sell earring under the trade name of ‘Blue Sapphire’ but the earrings are actually a ruby this is deceiving the consumers of what the product actually is. Finally, a geographic location as a trademark is risky because the consumers will think that the good/services derived from there.

Other grounds for refusal

There are other types of trademarks which cannot be registered. A family surname cannot be registered unless the surname is associated with the brand/product. Popular mottos cannot be registered, for example ‘drive safely.’ In addition, political, religious, immoral, deceptive remarks or scandalous words, national symbols (flags ie of the United States or any country) or the president’s signature cannot be registered without consent.

In the end you can appeal a decision of refusal by the examining attorney but you will have the burden of proof in showing that your trademark is not causing confusion. When thinking of a trademark for your goods or services keep the above grounds in mind to save time and money.

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