Most common reasons for trademark refusal by the USPTO

As indicated in the World Intellectual Property Indicators Report[1], there are well over 213.65 million companies and 64.4 million trademarks registered across the world, which makes it harder to make brand names 100% unique and distinctive. Moreover, there is an inherent risk in filing a trademark application, and the complexity of the process differs from one trademark office to another. In this article, we will introduce some of the most common reasons trademark applications can get rejected by the United States Patent and Trademark Office (USPTO).


Igor Demcak

In comparison to other countries, it is the US that displays the lowest success rate when it comes to trademark registration. While only about 51.7% of all applications filed with the USPTO are successfully registered, this figure is considerably higher in the EU (90.0%) and the UK (78.7%). Moreover, Over the last five years, the success rate of trademark applications in the US has declined from 59.1% down to 51.7%.

USPTO trademark approval rate

The USPTO, as any other trademark office, follows a set of rules to evaluate trademark applications and either lets them proceed to registration or rejects them. However, while the UK and the EU intellectual property offices (UKIPO and EUIPO, respectively) merely notify the owners of previous trademarks about the new application, it is the general practice of the USPTO to automatically raise an office action against the new trademark application.

Why does the USPTO reject trademark applications?

  • Trademark is merely descriptive or generic

  • Likelihood of confusion with an already registered trademark

  • The trademark is deceptively misdescriptive

  • Application error

Trademark is merely descriptive or generic

By definition, a trademark needs to display sufficient distinctiveness to identify the origin and ownership of the products and services. That means generic and descriptive words should be avoided at all costs.

A descriptive trademark is a term with a dictionary meaning that directly describes some characteristic of the product or service. Descriptive marks are not registrable right away, but if the applicant can prove the brand name has acquired distinctiveness, it can be registered. Examples of such trademarks include Best Buy and American Apparel. The underlying reason stems from the market-wide recognition of these brands which consequently enabled a successful trademark registration as the brand clearly signals the recognizable source of goods to the customer. Business owners should bear in mind that the mere inclusion of laudatory words (best, super, top, prime, etc.) or geographical terms is not sufficient to make a trademark distinctive. 

Terms with generic meaning, such as “shoes” for a shoe business, or “salt” for sodium chloride, can never acquire distinctiveness and are therefore unregistrable. Moreover, a brand name can become genericized if customers associate the name with a type of product/service rather than a particular brand, which is what happened to aspirin, yo-yo, cellophane and many others. When a brand becomes generic, it loses its right to trademark protection.

Likelihood of confusion with an already registered trademark

Another problem commonly associated with creating a distinct trademark is making sure that it is not too similar to already registered brands. Many starting businesses that tried to register their trademarks without prior research have either suffered rejection directly from the trademark office or received opposition from their competitors who registered before them. Trademark law strongly prioritizes companies that filed the trademark application first, even if the registration process was not yet completed. As a result, the USPTO in general recommends searching their trademark database (Trademark Electronic Search System, or TESS) prior to starting with the registration.

The USPTO conducts a search for conflicting trademarks as part of the official examination of an application only after a trademark application is filed. In evaluating an application, the examining attorney conducts a search of USPTO records to determine whether there is a conflict between the trademark in the application and a trademark that is either registered or pending in the USPTO. The principal factors considered in reaching this decision are the similarity of the trademarks and the commercial relationship between the classes of goods and/or services identified by the trademarks. To find a conflict, it is not required that the marks and the goods and/or services be exactly the same; instead, it is sufficient if the marks are similar and the goods and/or services related such that consumers would mistakenly believe they come from the same source.

Even if two marks are found to be confusingly similar, a likelihood of confusion will exist only if the goods and/or services upon which or in connection with the marks are used are, in fact, related. To find relatedness between goods and/or services, the goods and/or services do not have to be identical.  It is sufficient that they are related in such a manner that consumers are likely to assume (mistakenly) that they come from a common source.

The trademark is deceptively misdescriptive

Another common mistake is trying to register a trademark that might be considered deceptive by the USPTO. Deceptive trademarks suggest a component, ingredient, or objective that would mislead consumers. For example, a company uses the word ‘organic’ in its name but does not sell organic goods. The USPTO uses the following test to determine whether a trademark consists of or comprises deceptive matter: 

  1. Does the trademark misdescribe something about the product/service?

  2. If so, is a purchaser likely to believe that the misdescription actually describes the product/service

  3. If so, is the misdescription likely to affect a purchaser’s decision to buy the product/service?

If your answer to any of these questions is yes, there is a high chance of your trademark application being rejected.

Application errors

USPTO applications emphasise specificity and precision, and it can be easy to slip up if you aren’t familiar with the process. For example, choosing the wrong class or providing an unclear description of goods and services for your trademark can significantly reduce the chance of successful application. Other times the applicant can choose the wrong entity or list the name of the wrong person or company that owns the trademark. Skill, experience and attention to detail play an essential role in mitigating the potential risks that could impede a successful trademark registration. Find out more about how to maximise chances of a registration success or book a free consultation with a professional trademark attorney to increase your chances of successful application.


Igor Demcak
Igor Demcak

Trademark Attorney

Founder & CEO of Trama

7 year experience in IP protection

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