Grounds for Refusal of a Trademark

Grounds for Refusal of a Trademark

The USPTO will refuse to register a trademark for certain reasons.

Several common grounds for refusal include:

1. The proposed trademark is merely descriptive or deceptively misdescriptive of the applicant's goods or services. Examples of merely descriptive trademarks which could be refused include: "medical guide" for website services featuring medical guides, "denim" for jeans, and "spicy sauce" for salsa.

2. The proposed trademark consists of or comprises immoral, deceptive, or scandalous matter.

3. The proposed trademark may disparage or falsely suggest a connection with persons (living or dead), institutions, beliefs, or national symbols, or bring them into contempt or disrepute.

4. The proposed trademark consists of or comprises the flag, coat of arms, or other government insignia of the United States or any state, municipality, or foreign nation.

5. The proposed trademark consists of or comprises a name, portrait or signature identifying a particular living individual, except by that individual's written consent; or the name, signature, or portrait of a deceased U.S. President during the life of his widow, if any, except by the widow's written consent.

6. The proposed trademark resembles a mark already registered with the USPTO, so that use of the applicant's trademark would likely cause confusion, mistake or deception.

7. The proposed trademark is primarily geographically descriptive or deceptively geographically misdescriptive of an applicant's goods or services.

8. The proposed trademark is primarily merely a surname.

9. Matter that, as a whole, is functional. For example, the word "Fragile" cannot be used to trademark labels bearing that word to connote fragility of a package's contents.

  • Trademark Statement of Use
    To register a trademark with the U.S. Patent and Trademark Office (USPTO), you must prove that you are actively using your trademark to sell goods or sell or advertise services. In other words, you cannot register a trademark simply to tie up the rights to it. You must actually use it in commerce...
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  • Requirements for Filing Statement of Use
    Along with your Statement of Use, you must provide to the USPTO: (1) a filing fee for each class of goods or services, and (2) a specimen showing use of the trademark for each class of goods or services that you originally selected. Your trademark can only be registered in those classes and those...
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  • A Word About Trademark Specimens
    A trademark specimen is a real-world example of how you are using your trademark on goods or in the offer of services. A specimen is more than just a picture of your trademark or logo. For goods (products), acceptable specimens include labels, tags, packaging material, instruction manuals and...
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  • Time Frame for Filing a Trademark Statement of Use
    To complete the trademark registration process, you must file a Trademark Statement of Use within the following time period:
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  • Searching for Conflicting Trademarks
    While you are not required to search for conflicting trademarks, it is highly recommended. Should there be any existing trademarks already federally registered that conflict with yours, your application can be denied and your filing fees would not be refundable. Additionally, since trademarks can...
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  • Legal Requirements for Registering Your Trademark
    There are four basic requirements for filing a trademark (or service mark) with the U.S. Patent and Trademark Office (USPTO). The trademark must be applied for under the actual owner's name. The owner of the trademark is the person who controls the nature and the quality of the goods sold or the...
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