Smart brand owners want to register their trademarks at the United States Patent and Trademark Office (USPTO). Doing so gives them a great deal of protection to ensure that someone else will not encroach upon their distinctive brand. However, before committing to choosing a mark it makes sense to consider a few preliminary issues. It’s not great to invest time and money in your brand and in completing a trademark application only to have the USPTO reject your application.
The following are just a few reasons that the USPTO will reject your trademark, but there are others:
- It is confusingly similar to another registered trademark. Maybe you already guessed this one, but let’s make sure that we are all clear on what it means. For a trademark to be “confusingly similar” does not mean that the mark is exactly the same as a registered mark, it means that the mark is confusingly similar. That’s a legal term of art that seeks to determine if consumers would be confused by the existence of two similar marks. There might be similarity in how the word sounds, there might be overlap in part of another mark (but not the whole thing), or maybe the mark incorporates a distinctive trait of another set of registered marks (if I tried to register McLawyer, I might have some problems with a certain purveyor of fine foods). The key thing to know is that this determination is not a matter of opinion, but one formed by looking at legal precedent. This is why getting a real trademark search done is so crucial to getting a successful trademark registration.
- It is confusingly similar to an unregistered trademark. This is sort of a bonus reason because I have found that people are often surprised to hear that someone’s unregistered trademark can cause problems for his or her trademark registration. The bottom line: owners of unregistered trademarks have rights (though not always as extensively as owners of registered marks) and can prevent your trademark from being registered on the ground that your proposed mark is confusingly similar to theirs. A professional trademark search will uncover owners of unregistered trademarks.
- It is descriptive. Marks that simply describe a product are going to have a hard time getting federal registration: “Computer” for computers, “Apple” for apples, etc. The USPTO won’t register a mark that would make it difficult for other participants in an industry to describe their products without infringing. The types of trademarks that have the most success in being registered are those that are “arbitrary”, for instance, using “Apple” as a trademark for computers.
- It isn’t being used. The USPTO can’t register your trademark unless it is being “used in commerce”. This is a legal term of art that means “used in commerce across state lines or internationally” – if your use is non-existent or strictly within your state, then the USPTO might determine that you haven’t used your mark in commerce and reject your application. If there is a trademark that you want to use, but haven’t gotten around to doing so yet, you might be eligible to file an “intent to use” trademark application.
The overarching point is this: if you are going to go through the trouble of registering a mark, you want to make sure that your registration has a good chance of succeeding so that you can reap the benefits. One way to get to this is to create a list of proposed marks and see if they run afoul of any of the above. For most people, it actually makes sense to do this before investing money in branding or even considering a federal registration. Usually a consultation with a trademark attorney will help clear up any issues, and many attorneys can help you search all the databases that you will need to if you are going to avoid having a conflict with another mark.
After all, there is no point in coming up with a brand and spending money on registration only to have the USPTO say “No” when you try to get that important federal trademark registration and the benefits that come with a successful trademark registration.
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