68% to 81% of ALL filed applications are initially rejected by the Trademarks Office. Why does this happen?
Learn about the 3 common issues found in trademark applications in this video:
Let's face it, most trademark applications get rejected, at least at first.
The stats are that 68% of all trademark applications get initially rejected. That number goes up to 81% of trademark applications filed by self-represented applicants. And when I say, "self-represented," I don't only mean trademarks where you as the brand owner do all the work. I also mean trademarks filed through one of those online services when you fill out a form on their website, they file a trademark application on your behalf, but your application doesn't have an attorney or trademark agent of record. As long as you're not formally represented by an attorney (or a trademark agent in some countries), you are deemed to be a self-represented applicant, and yes, 81% of such applications are initially rejected.So what can go wrong with your application and what are the main reasons your trademark application can be rejected?
Watch this video and find out!
I'm Andrei Mincov, the founder of Trademark Factory, and in this video, I'll walk you through some of the main reasons your trademark application can be rejected by the Trademarks Office.
Let me give you a bit of context first:Once your application is filed, the Trademarks Office will timestamp it and assign it a number.And then—silence. Nothing is going to happen for months.In some countries, it's just a couple of months. In the U.S., it's usually 3 to 4 months. Canada is really backlogged, and the period of silence now takes close to two years...So it can take some time, and then... the Trademarks Office will pick a specialist from their ranks, they are typically called examiners. In the U.S. they're called examining attorneys...
So the examiner will take a look at the trademark application, conduct their own trademark searches, and come to one of two possible conclusions.He or she can approve your application as is—and then you're golden!Or they can find some issues with it, in which case he or she will list those issues in a formal letter called an office action.Some issues are easier to fix than others, but the important thing to understand is that an office action is not a death warrant. You can—if you know how—respond to it and either fix or fight the issues the examiner listed.
There are a million things that can go wrong with a trademark application—which is why no other firm in the world except for Trademark Factory® dares to charge a single fixed fee that covers responding to any and all office actions and back it up with a 100% money-back guarantee—simply because some of these issues are pretty subjective and often outside of the trademarking firm's control. It's not that we don't understand the risks. We do. In fact, it's BECAUSE we understand the risks that we want to give brand owners who a serious about their brands a no-brainer option that shifted all these risks from them to us.
So with that said, let's go to the most common reasons office actions get issued and trademark applications get refused.Generally, all these issues can be split into two big groups: there can be problems with your application and there can be problems with your trademark itself.Usually, the problems with the application are the easiest to fix.The most common one is the list of goods and services.You are supposed to break the goods and services for which you are claiming your trademark into one or more of the 45 classes of the Nice convention.If you do it wrong, you will get an office action.
Often, examiners feel your trademark application belongs in more classes than you've filed for, and if that's the case, you will be required to pay additional government fees to cover the difference.On top of that, the words you use to describe your goods and services must be specific enough for people to understand what exactly you are trying to claim a monopoly.If the examiner feels you need to be more specific, there will be an office action to respond to.
In most cases, these are easy to deal with. Yes, you may need to pay more in government fees and potentially be somewhat creating in reformulating your list of goods and services, but generally, as long as you respond to the office action with some reason, you should be able to overcome these objections.Oh, by the way, when I say "easy to deal with", I don't mean easy for somebody who doesn't know what they're doing: most self-represented applicants don't know how to respond to even the simplest objection. I mean easy for those who are experienced with the trademarking process.
Another cluster of objections pertains to logos. When you file your trademark application to protect a logo, you need to describe it in words and you need to specify whether you want to claim color as a feature of your mark. Examiners often find defects in how this is done and may issue an office action to have you correct these deficiencies.
In the U.S., there is another common type of office actions. When you file your application, you are required to provide information about the owner of the trademark, including the residency. If you are not a U.S. resident (or, in cases where the owner is a company, when the company is not registered in the U.S.), you are required by a new law to have a U.S. attorney of record on your trademark applications. If you don't (again, whether you filed your application directly or through an online filing service that does not appoint an attorney of record to represent you before the USPTO), you will get an office action stating that your application violates the requirement that you must have an attorney of record on your application.
There are other issues that the examiner might identify with your application, but these three are the most common ones: list of goods and services; issues with the way logo marks are filed, and issues relating to trademark owner's identity and whether they are represented in the U.S. by a properly appointed U.S. attorney.
OK, so let's go to the second group of office actions that relate to problems with your trademark itself.The function of trademarks is to allow the market to tell your products and services from identical or similar products and services of everyone else.If the trademark examiner feels your trademark does not fulfill that function, your application will be refused.There three big potential objections here—all of which often require dozens of pages of legal arguments—and are very difficult to overcome.
First, the examiner may claim that whatever it is you're trying to trademark does not function as a trademark because it does not distinguish and is not designed to distinguish your goods and services from those of others. Good examples of that would be "Made in the USA" or "Drive Safely" or the TM symbol. Basically, you can't trademark something that doesn't set you apart from others in your industry.
A variation of this problem is when the examiner thinks the use is purely ornamental (we have a separate video about ornamental trademarks, but basically, an ornamental trademark is one when you are trying to trademark some an image or a phrase that has its own artistic or literary value, rather than it being an indication of a brand.)Another variation is functional trademarks when you are trying to trademark something that goes to a functional feature of your products. For example, Lego couldn't trademark the shape of their building blocks in some countries based on the idea that what they were trying to monopolize was the product itself rather than the brand that allowed the market to tell their building blocks from the building blocks of their competitors.
Close to this is the descriptiveness objection.If the examiner thinks that your mark does nothing other than simply tell the market about the quality, characteristics, or features of your product, they may consider that your trademark is merely descriptive.For example, "5G Phone" would be considered merely descriptive. So would "Color printer", "Timely accounting" or "Cold Beer."Once again, the function 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. It's to give you the monopoly over the product or service itself. It's about making sure that if a customer sees two boxes on a shelf—one of them is yours and the other is your competitor's—there is something on your box that allows the customer to tell your product and service apart from somebody else's.
We have a separate video about generic, descriptive, suggestive, arbitrary, and fanciful marks. Make sure you watch it to better understand where your brand falls in terms of descriptiveness.Having said that, in most countries, you can't trademark terms that are considered merely (or clearly) descriptive.The U.S. is an exception because it gives applicants whose trademark was refused because it was deemed descriptive, it gives them an opportunity to register their trademarks on the Supplemental Register. Again, we have a separate video about that, but as a quick introduction, the Supplemental Register is where you get to claim your monopoly over clearly descriptive trademarks, which doesn't guarantee that you would be successful in stopping others from USING the same term but it does guarantee that nobody else would be able to successfully TRADEMARK the same terms because you claimed it for yourself.To go back to the "Timely Accounting" example, all it does is just tell people that you are providing accounting services and an important feature 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 would be unfair to other accounting firms. That's why such trademarks are flagged as problematic.
The "Timely Accounting" example is pretty obvious but Trademarks Offices around the world are getting increasingly picky to make sure that descriptive trademarks don't get registered because there are more and more trademark applications being filed every year. To give you some context: last I checked, there were over 50,000 trademark applications filed in Canada every year; over 600,000 trademark applications in the U.S., and over 7 MILLION trademark applications filed in China every year. That's a LOT of trademarks—and Trademarks Offices around the world don't want applicants to get more protection than they should.
As I mentioned, if you get a descriptiveness objection in the U.S., you can try to move it to the Supplemental Register—assuming you have active use of the mark in commerce. If not, you would need to argue that your mark is not clearly descriptive or that it has acquired secondary meaning. These arguments are very complex and normal people without legal training are not qualified to successfully address them. It's not one of those arguments you can win based on common sense.
Finally, the third type of objection that can be raised against your trademark is that it is confusingly similar to a previously applied-for or registered mark.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.That's why I can't stress the importance of a proper trademark search enough.Last thing you want is to file your trademark, poor more money into building your brand—to find out, months later, that your brand cannot be trademarked because it is confusingly similar to another brand that someone had filed or registered before you.As frustrating as learning about such trademarks could be, you're much better off knowing about them BEFORE you file your trademark application than AFTER.
If you get an office action that mentions that your trademark application is confusingly similar to another mark, there are a few tactics you could use.You can argue that your trademark is, in fact, NOT confusingly similar and provide your best arguments to support that.Alternatively, you can try limiting the list of goods and services in your trademark application to those that do not overlap with the goods and services of that other trademark.You can try to reach out to the owners of the other marks and see if they would be willing to enter into what's called a trademark coexistence agreement or you can try attacking the other trademarks by launching opposition proceedings against previously filed and still pending applications or cancellation proceedings against marks that are already registered.
So there you have it.These are the most common reasons your trademark application might get refused—starting with formalities relating to your application—all the way to issues of descriptiveness and confusing similarity.If your brand is important to you, make sure you don't leave trademark registration to chance.
Make sure you get your trademarking done right.And when I say done right, I mean get it done by someone who knows what they are doing.
How will you know?
Well, ask them 3 simple questions:Question #1: Will my trademark application have an attorney of record handling my file from start to finish?
Question #2: Does your price cover responses to any and all office actions that my application might trigger?
And finally, Question #3: Will I get my money back if my application is ultimately rejected?
If you want to minimize your risk, only go with a firm that will answer Yes to all these three questions.To the best of my knowledge, Trademark Factory is the only such firm in the world.In fact, I'm so confident about it, if you find another firm that will answer Yes to all three questions, let us know—and we will file your trademark for free.So, if you are serious about protecting your brand, start with booking a free call with one of our strategy advisors and see how we can help.Until then, I'll see you in the next video.
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.