Simplifying Legal Stuff

WITH ATTORNEY FAITH MITTON

Article: Your Trademark Application Got Rejected. Now What?

Disclaimer: This content is for general legal education purposes only and shouldn’t not be relied upon as legal advice specific to your situation. If you need legal advice, consult a licensed attorney.

So, you’ve started the process of trademarking your brand, only to receive the unexpected news – your trademark application got rejected. Don’t hit the panic button just yet!

In this rollercoaster trademark ride, there’s one major thing that can throw you for a loop: office actions. This blog post will break down the most common scenarios where office actions crop up as well as common ways to get around them.

Buckle up, and let’s dive in! We’ve got A LOT of ground to cover.

Table of Contents

First Up, What's The Deal With Office Actions?

Okay, so what IS an office action, and why should you care about it? Let’s back up for a sec and put some context on this thing.

Trademark applications are not the type of legal filing that get automatically approved by a system. (Side note: LLC filings tend to be approved this way, so if you filed your LLC and got an instant approval – don’t expect the same thing to happen with your trademark). 

The whole point of registering a trademark with the government is to let everybody know that you own the name, tagline, or logo that’s listed in your registration. 

These names, taglines, and logos represent your brand and are the core things that can be protected with a trademark. But some non-traditional types of branding that can be trademarked include colors, scents, domain names, and even building designs.

Trademarks are all about making sure that people can easily recognize your brand and distinguish it from anyone who’s doing something similar to you. 

The beautiful thing about registered trademarks is that they can give you exclusive rights over your brand, meaning that you’ll be able to stop competitors from using branding that’s similar to yours!

But not everything can (or even should) be approved as a registered trademark.  

So because of this, the approval process of trademark applications is SUPER INTENSE. There are thousands of trademark applications filed with the US Patent and Trademark Office (or USPTO) every day, and each application has to be reviewed by an individual person! 

(Not the same person, mind you – the UPSTO has tons of examining attorneys on staff whose only job is to review and decide on trademark applications). 

But each trademark application has to tick off all the boxes on a legal checklist to be approved. So when an examining attorney see that an application misses one of the boxes, they have to notify the applicant in writing that something is wrong with their application.

And THAT’s what an office action is: a written notification from the USPTO that the trademark application you filed has been rejected because it didn’t meet one or more of the legal standards required for approval. 

But there’s good news! You ALWAYS have a chance (and sometimes more than one chance) to address and correct the issues that the USPTO examining attorney highlights in an office action. 

So although an office action is a rejection, it doesn’t mean your trademark can’t ultimately be approved.

Different Types of Office Actions (And How To Beat Them)

The issues that an examining attorney can raise in an office action typically fall into two main categories: procedural issues and substantive issues. If an application has both procedural and substantive issues, they’ll usually be combined in one office action. 

Procedural Issues

These issues come up when a trademark applicant hasn’t dotted their I’s or crossed their T’s. In other words, these are minor, technical issues that are usually pretty quick and easy to fix. 

In the office action, the USPTO examining attorney will tell you exactly what you need to do to correct the problem. It’s a little easier to understand procedural issues with an example in mind, so let’s use this one: 


Tasha is a grade school math tutor who sells different educational courses and workbooks and who runs a mobile app where students can practice math exercises. She applies to register a trademark for : TASHA’S TUTORING.

Here are some examples of procedural issues that Tasha could face:

  • Class Problems
  • There are 45 classes that you can apply to register a trademark in. These classes are broad categories of products and services, but they’re not based on industries. Instead, they focus on the activity you do within your industry. 

    So, you have to correctly match the class to your products and services – otherwise, you’ll get an office action. 

    In our example with Tasha, the educational courses would be in Class 41, the printed workbooks would be in Class 16, and the mobile app would be in Class 9. 

    If she applied for the trademark only in Class 41, she’d get an office action telling her to pay for the additional 2 classes.

  • Misidentification of Products and Services
  • Although you have to apply to register a trademark in a class, the classes are HUGE since there are only 45 of them and there are a bajillion different products and services that are squeezed into these 45 classes. 

    So, a successful trademark application has to list the specific products and services that are connected to the trademark. This is known as an “identification of goods and services” or a “description.”

    But the description has to be in the right technical legal format and must match the right class. Otherwise, it will trigger an office action.

    In our example with Tasha, she would get an office action for her description if it looked like this: “I am a tutor who teaches kids about math through online courses.” 

    That’s because it’s in the wrong format. Instead, it should look something like this:“Educational services, namely, providing online courses of instruction at the primary level in the field of mathematics.” 

    If there’s a problem with your description, the examining attorney will provide an alternative description that meets the legal requirements in the office action.

  • Bad Specimen
  • Having a “specimen” is one of the most important requirements for a trademark application to be approved. A specimen is another way of saying “proof of use.” 

    You must be using a trademark publicly to market/sell products or services in the United States in order to get trademark rights, so the UPSTO will want to see proof of this use in your trademark application. 

    Website screenshots are most commonly used as proof of use, atlhough there are other things that can be used as specimens too (like invoices, hang tags on clothing, brochures, photos of storefront signage, point-of-sale displays, etc). 

    But trademark applicants tend to trip up when they use a specimen that doesn’t show the trademark as filed or if they use the wrong type of specimen based on the trademark class. The office action will explain why the specimen doesn’t cut it.

  • Filing Basis
  • Remember when I said that you must be using a trademark publicly in order to get trademark rights up there in the last paragraph? Well, when you file, you have to tell the USPTO whether you’re using it publicly or not. 

    This is known as the filing basis. For trademark applicants in the United States, there are two filing bases: in-use (for people who  currently using their trademark publicly) or intent-to-use (for people who aren’t using the trademark publicly yet). 

    In-use applications are also known as applications with a 1(a) filing basis, while intent-to-use applications are known as applications with a 1(b) filing basis. You can call them 1(a) applications or 1(b) applications for short, too.

    In our example with Tasha, let’s say that she hasn’t launched her tutoring business yet, but she has a website up that says “TASHA’S TUTORING COMING SOON.” 

    If she submits a 1(a) application and a screenshot of her website as a specimen, she’ll get an office action telling her that her specimen won’t work since “coming soon” doesn’t count as public use and that she should change her filing basis to 1(b).

    Any office action you receive that raises filing basis as an issue should explain why the filing basis you chose is incorrect and what you should do instead.

  • Disclaimer
  • Another thing I said earlier is that trademarks are all about distinguishing your brand from anyone doing something similar to you. This makes it easy for people to pick your business out of the sea of competitors.

    But if your trademark includes language that lots of other people in your industry use to describe their work, you’ll need to disclaim that language. 

    In other words, you’ll need to admit that you don’t have the exclusive rights to use that language and that you can’t prevent someone else from using that language to sell similar products and services. 

    This is to make sure that other people can still use those common, everyday words to sell their products and services – because it wouldn’t be fair for one person or company to own those words. 

    In our example with Tasha, the word “tutoring” is a common word used by tutors to describe their services. So Tasha would likely get an office action explaining that she needs to add a disclaimer for the word “tutoring” in her trademark. 

    If you include commonly used language in your trademark, the examining attorney may send you an office action requiring you to amend your application to add a disclaimer. 

     

    Although procedural issues can look simple, sometimes following the USPTO instructions can land you in hot water. Remember that the USPTO examining attorney is NOT your attorney, and they are not there to advise you about how to best protect your brand. 

    As a matter of fact, the examining attorney will actually tell you to hire your own lawyer in the office action if you don’t have one already! The examiners work for the USPTO, so they are not really in your corner and it’s not their job to look out for your interests. 

    That means you have to take their recommendations (even on “simple” procedural issues) with a grain of salt, because the wrong move can have devastating effects on your brand long-term. 

    A good example of this has to do with disclaimers, since they actually weaken your trademark rights. By admitting that you don’t have exclusive rights over the disclaimed language, you open the door to having lots of other competitors using that same language. 

    Don’t get me wrong – in some cases, a disclaimer is completely appropriate. This would be true of TASHA’S TUTORING. But in other cases, a disclaimer isn’t appropriate because the commonly used word is used in a unique or bizarre way that changes its meaning.

    For example, think of the trademark URBAN SAFARI. Both urban and safari are everyday words that have meanings we all easily understand. But combining them creates a new concept whose meaning has us scratching our heads. 

    Is it a tour guide service? A restaurant? A home decor company? It’s not entirely clear. This would be a case where it might be a good idea to write a legal brief challenging a disclaimer requirement for “urban” or “safari.”

    Speaking of legal briefs, that’s a perfect segue into our next topic: substantive issues in office actions.

    Substantive Issues

    These issues are not minor or technical in the slightest, and there’s no quick fix for them. Instead, you typically have to reply with legal arguments to convince the examining attorney to change their mind and withdraw their rejection.

    But you can’t make these arguments by phone or email. Instead, you have to submit them in professionally written legal briefs that follow a specific format. As with any persuasive legal brief, stating your opinion isn’t enough.

     To get the examining attorney on your side, you’ll need to follow the tried and true L+F = W formula.

    Law + Facts = Withdrawal of Rejection (or, WINNING!)

    The LAW part of the formula means that you need to reference court decisions in your arguments that support your position. You’re probably familiar with the concept of “precedence” in the law. 

    Basically, it just means that decisions made in previous cases can influence or guide the outcome of similar cases in the future. The USPTO examining attorneys as legal professionals are obligated to  follow precedent.

    But it’s not enough to know which cases to reference. This is where the FACTS part of the formula comes in. Here, you’ll need to explain how the legal decisions you’re relying on apply to your specific situation. 

    This requires presenting evidence about your trademark (and about your competitor’s trademark, if relevant). Then, you’ll need to discuss how the general legal principles from the cases you’ve cited should be used to interpret the evidence you’ve presented.

    This will make more sense when we look at the most common substantive issues addressed in office actions:

  • Merely Descriptive
  • Descriptive trademarks are weak trademarks, meaning that they can only get limited protection. These types of trademarks tell people about a quality, feature, use, or function of your products and services in very obvious way.

    For example, calling a coffee shop “Fresh Brew” is pretty descriptive because it directly conveys information about the type of product being offered since we all know that coffee is brewed.

    Descriptive trademarks get hit with office actions because the USPTO has to avoid granting exclusive rights to terms that others might legitimately need to use to describe their products or services.

    But entrepreneurs choose descriptive trademarks all the time because they’re easy to come up with. Honestly, the first thing that pops into your mind when you’re brainstorming a name or tagline will usually be something that’s descriptive. 

    So before you fight a descriptiveness refusal, you have to figure out how your time and money will be best spent: by responding to the office action or by rebranding so you can choose a more unique and creative trademark.

    If you choose to fight it, there are a bunch of strategies you can use. But here’s how the L +F = W formula might work in one scenario:

    LAW: find cases where the courts said that the trademark suggested the products and services being sold in a creative way that required imagination, instead of simply describing them 

    FACTS: then discuss how your trademark does the same by making people think about how the trademark is linked to what you sell rather than spoonfeeding them the connection

  • Likelihood of Confusion
  • Trademarks are all protecting a business’ brand identity. So the USPTO won’t approve a new trademark application if it is confusingly similar to another pending or approved application in their database.

    The reason for this is to prevent situations where people could mistake one brand for another, leading to potential harm for both businesses involved as well as the person who gets confused. 

    The USPTO can’t grant exclusive rights to one business for a trademark and then whip around to approve a very similar trademark for a competitor. 

    It would create absolute chaos and defeat the purpose of having a trademark registration in the first place. But trademark conflicts are super subjective, and reasonable people can disagree about whether a conflict even exists. 

    Lots of factors have to be considered when deciding if there’s a likelihood of confusion, but the two most important are the similarities in sound and appearance and relatedness of the products and services. 

    If the trademarks look or sound similar and are used on related products or services that seem as if they could be sold by the same company, there’s a good chance that the likelihood of confusion refusal will be hard to beat. 

    That doesn’t mean impossible to beat, though! There are many ways around a likelihood of confusion office action, but here’s how it might work in one scenario. As always, we rely on our L + F = W formula:

    LAW: find cases that say that confusion isn’t likely for companies have similar trademarks if their customer bases are completely different 

    FACTS: then discuss the evidence that shows that you have a different target audience than the company whose trademark was cited against yours & that you each reach your clients in ways that don’t overlap with each other

  • Failure to Function
  • Like I said before, not everything can (or even should) be trademarked. In order for something to be considered as a trademark  legally, it has to help people identify a specific person or company as the source of certain products or services.

    But there are many types of situations where something that’s been chosen as a trademark doesn’t operate in this way. In other words, it fails to function as a trademark.

    One situation is when someone attempts to trademark a phrase that’s commonly used by people everywhere (such as “Hello, How Are You?”) or that’s simply informational (such as “All-Natural Ingredients”).

    We all use this kind of language every day, so it would be difficult for anyone to realize that it’s meant to identify a specific brand owner. Therefore, it fails to function as a trademark.

    Another situation relates to when a trademark is used in a way that most people wouldn’t recognize as identifying a particular business. For example, when we’re trying to find out which company made a t-shirt, we tend to look at the tag inside the shirt.

    That’s because the front of a t-shirt is usually reserved for decorative items or some type of message. And even if a company has a t-shirt line, the front of the shirts may all be different.

    So you can’t reliably look to the front of the t-shirt to figure out the identity of the brand. So anything that’s on the front of a t-shirt would likely fail to function as a trademark.

    The one exception to this would be if the words or design were on the breast pocket of the shirt, similar to the Polo Ralph Lauren logo, because over time we’ve all come to associate that with the identity of a company.

    One more situation that’s relevant here would be when the trademark is considered to be generic. Generic trademarks are a step below descriptive trademarks, which I talked about earlier in this blog post.

    While descriptive trademarks describe something about the products or services (e.g., if the trademark is RED AND DELICIOUS for apples), generic trademarks describe the products or services themselves (e.g., if the trademark is APPLES for apples).

    To preserve free speech and make sure no one owns a monopoly on words we all need to use to describe everyday things, generic names and phrases fail to function as trademarks.

    In all of the situations I described above,  the thing chosen as a trademark didn’t actually operate as one. So how might you beat back a failure to function office action and push your way through to approval?

    As with the other types of substantive issues, there are lots of strategies that can be used – but even more so here because there are so many different types of failure to function refusals.

    But I’ll never leave you without an example, using our handy-dandy L + F = W formula. Let’s say that you applied to register a trademark for your domain name, but it was flagged as generic in an office action.

    LAW: find cases where the court said that domain names that might be considered generic aren’t actually generic if enough people think of them as being a brand name rather than just a domain name

    FACTS: then discuss the evidence which proves that you’ve built a strong enough brand over time that people associate your domain name with your specific business, rather than any other business that can do what you do

     

  • Primarily Merely A Surname
  • I’ve said this in different ways throughout this blog post, but it’s worth repeating here: owning a registered trademark can give you the ability to stop someone who sells similar products or services from using a trademark similar to yours. 

    It’s a legal superpower that allows you to check line-steppers with the quickness. But there are limits on that. An important one is when the thing you’ve chosen to trademark includes a well-known surname (or last name).

    If common surnames were freely allowed as trademarks, people might be easily confused about the origin of products or services, leading to a breakdown in the trademark system’s ability to provide clear and reliable information.

    And from a purely practical perspective, people need to be able to use their legal last names. It would simply be unfair to restrict anyone from using their own name just because someone else was lucky enough to register a trademark for it first. 

    The trademark system has to balance the rights of brand owners to own names for marketing purposes with the rights that we all have to identify ourselves and be known by our legal names. 

    So if your trademark includes a common last name and is used in a way that consumers would perceive as merely identifying a person, the USPTO may issue a surname refusal in an office action.

    But you’ve seen trademarks that include common last names before (the biggest example being McDonald’s!), so you must be thinking to yourself that there has to be a way around these office actions.

    And you would be right! Using our favorite L + F = W formula, here’s one way that you might convince an examining attorney to change their mind: 

     

    LAW: find cases that say that a name is not primarily, merely a surname if it identifies a historical place or person

    FACTS: then discuss the evidence that shows that the surname in your trademark references a cultural icon rather than any run-of-the-mill person with that surname

     

    With substantive office actions, you don’t have to limit yourself to just one argument. In fact, the more arguments you can present, the better! It makes it easier for the examining attorney to withdraw their rejection since they have multiple things to consider. 

    Wrapping It Up

    Whew! This blog post ended up being a dissertation on trademark rejections! Kudos to you on making it all the way through to the end. You must have had a marathon reading session.

    But I’ve gotta be honest – what I’ve covered here barely scratches the surface on the things I’ve discussed. After reading this, you definitely have a better understanding of the world of trademark office actions, but not a complete understanding.

    Trademarks are so complex that it’s impossible to condense all the twists and turns in the application process into an easy-to-read format like this. 

    And while there are some legal issues that you can handle on your own with the right guidance, trademarks just aren’t one of them (at least in my opinion).

    There’s a reason why people like me dedicate their entire legal careers to helping entrepreneurs safeguard their brands with trademarks. Because even after years of professional legal training, we have to keep up on constant changes in trademark law. 

    Then balance that with  changes happening in the business world, and craft comprehensive strategies that align with our clients’ unique vision for their brand, reduce potential risks, and maximize protection. It’s enough to make anyone’s head spin!

    This isn’t a knock on your capabilities; it’s a recognition of the sophisticated dance required to waltz through the legal intricacies of trademarks. Think of it this way: you wouldn’t go on a solo expedition up a challenging mountain without an experienced guide. 

    Similarly, having a seasoned trademark attorney by your side ensures you’re equipped with the right tools and strategies to navigate the trademark landscape successfully.

    If you’re struggling with how to deal with a trademark rejection, the best thing you can do for yourself and your peace of mind is to contact a knowledgeable trademark attorney for assistance. 

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    About The Content Creator

    Faith Mitton, Esq.

    Faith is a lawyer on a mission to simplify legal stuff for entrepreneurs so that they don’t have to stress about how to protect themselves & their businesses. She’s the founder and managing attorney of Mitton Law Firm, PLLC – a boutique law practice based in NYC that helps small businesses nationwide to protect their intellectual property with trademarks and copyrights. When she’s not practicing law, you can usually catch her jamming to classic soul music, taking long walks, or rewatching The Office for the millionth time.

    About The Content Creator

    Faith Mitton, Esq.

    Faith is a lawyer on a mission to simplify legal stuff for entrepreneurs so that they don’t have to stress about how to protect themselves & their businesses. She’s the founder and managing attorney of Mitton Law Firm, PLLC – a boutique law practice based in NYC that helps small businesses nationwide to protect their intellectual property with trademarks and copyrights. When she’s not practicing law, you can usually catch her jamming to classic soul music, taking long walks, or rewatching The Office for the millionth time.

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