What Are the Two Main Reasons My Trademark Application Can Be Rejected?
There are two main reasons why your trademark may not be approved by the Trademarks Office.
Watch this video and find out what they are.
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There are multiple things that can happen after you file your trademark application and multiple reasons that the Trademarks Office may write back to you with some objections what they don’t like about your trademark application.
Many of these objections can easily be dealt with and fixed and tweaked around so that the Trademarks Office eventually accepts your application. And I am not saying that it is easy for somebody who doesn’t know what they’re doing—many self-represented applicants don’t know how to respond to even the simplest objections—but for people who know that they are doing, many objections are easy to deal with.
There are two big ones that are really difficult to address. And the two are descriptiveness and confusion.
So descriptive mark, if the Trademarks Office is of the opinion that you mark does nothing other than simply tell the market about the quality, the characteristics, the features of your product, they may consider that your trademark is merely descriptive or clearly descriptive. And clearly descriptive trademarks are not registrable in Canada and in the U.S. Because the purpose of the trademark is not to give you the monopoly over the product itself, the purpose of the trademark is to give you the monopoly over whatever it is that identifies your product and service apart from any other similar or identical product and service offered by someone else. So it’s not about the protecting the product, it is not about giving you a monopoly over the product or the service. It’s about making sure that the same product and service, if the customer sees two big boxes—one of them is yours and the other is your competitor’s—there is something on that box that will allow the customer to tell your product and service apart from somebody else’s.
That’s what a function of a trademark is and that’s why they don’t allow you to trademark words like “Accounting”... If you are an accountant you can’t trademark the word “Accounting” by itself. Or you can’t trademark “Timely Accounting” because all it does is just tells people that you are providing accounting services and the characteristic of those services is that they are timely. And if you were allowed to get a trademark on that, nobody else in the country would be allowed to say that they are also offering timely accounting services, which makes no sense. That’s why these are not trademarkable.
This example is pretty obvious but Trademarks Offices around the world are getting increasingly detailed to make sure that descriptive trademarks don’t get registered because there are a lot of trademark applications being filed every year, there are 6 million trademark applications filed worldwide every single year. And again, they don’t want to have trademarks on something that does not really perform the function of a trademark, that does not allow the market to distinguish products and services of one provider from identical products and servies of another provider. So, that what descriptiveness’ objection can lead to.
And the other objection is confusion. If there are other previously filed or registered trademark applications or trademark registrations, then it is the duty of the Trademarks Office to check and tell you, that unfortunately your trademark is confusingly similar to theirs, and so yours can’t be registered.
One other thing I need to mention is that in Europe they actually don’t—the Trademarks Office does not—check to see if your trademark application confusingly similar with other registered or applied-for trademarks. That’s very different there. There, it is the duty of other trademark owners who have registered trademarks there to police and see who files what trademarks. And they get an opportunity to oppose somebody else's applications but the Trademarks Office itself not going to do anything, so there the only big reason why your trademark might not go through is descriptiveness.
Both the descriptiveness objection and the confusion objection, they are not final. What happens is you file your application and then you get an opinion from the Trademarks Office, and then it is the job of the trademark professional to help the trademark owner to convince the trademark examiner that, in fact, it is not descriptive and here is how, or it is not confusingly similar and here is how. And we deal with these objections all the time and most of the time, we are successful because it is really the only thing what we do.
We’re filing hundreds and hundreds of trademark applications, and a lot of them get some objections, most of them minor, some of them are more serious than others and we know how to deal with that.
But again, if the question is what are the two biggest reasons why the trademark application might not go through, it is this: descriptiveness and confusion.
Disclaimer: Please note that this post and this video are not and are not intended as legal advice. Your situation may be different from the facts assumed in this post or video. Your reading this post or watching this video does not create a lawyer-client relationship between you and Trademark Factory International Inc., and you should not rely on this post or this video as the only source of information to make important decisions about your intellectual property.
See our answers to other frequently asked questions about trademarks or leave your comments below!
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