It can be crushing for brand owners to be told “no” when it comes to moving a great idea forward. A common obstacle is actually the United States Patent and Trademark Office (USPTO). The USPTO can refuse an application for a number of reasons. Here are a few that may not be obvious to business executives:
- Someone else already holds a trademark for the work or something very similar. If your brand is likely to be confused with material someone has already trademarked, the USPTO can refuse your application. Such is the situation currently facing Washington’s professional football team. The USPTO recently refused their trademark for “Washington Football Team,” saying it was confusingly similar to an application already submitted for “Washington Football Club.”
- The material includes offensive or disparaging language. Applications for trademarks that utilize scandalous or immoral images or words may not get approved. The Washington team is yet another example here, as the USPTO canceled the trademarks for Washington Redskins in recent years. However, there are no exact rules for what is and is not offensive, and the context of the material matters immensely.
- It is deceptive. Attempting to register something that deceives consumers or misdescribes the product, place of origin or another trait can be unwise. For instance, the USPTO may not approve a trademark application for Minnesota Hot Dish when the product comes from Illinois.
- It includes someone else’s name or likeness without their permission. Putting someone’s name or image on a product can be a significant risk when they have not or will not give their approval. Using surnames can also trigger a refusal by the USPTO.
There are ways to overcome a trademark refusal citing these and other reasons. Your approach will depend on why the USPTO denied your application, but generally, it can include making slight adjustments, getting someone’s approval or proving a second meaning.
With all this in mind, those wanting to trademark something will want to be diligent in searching trademark databases before investing too much into their work.
If you do receive a refusal, work with your legal team to strategize how you will respond.