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%).
There are two main reasons for this substantial difference. First, the USPTO is one of the few intellectual property offices across the world that requires a proof of commercial use of the trademark before it can be fully registered. While application with a mere intent to use can be filed by aspiring entrepreneurs who are still in the process of creating their brand and getting products to the market, a proof of commercial use must be submitted within 1 year from the registration date. Additional information about the distinction between the use in commerce and intent to use application in the US can be found in our Trademark Academy. Furthermore, the USPTO also requires an additional proof of the continued use of the trademark in commerce after five years from the registration date.
The second main reason for the considerably lower success rate for trademark applications in the US in comparison to the EU and the UK can be found in the specific practices of the respective intellectual property offices. Obviously, a trademark needs to meet the criterion of distinctiveness in terms of being both non-descriptive of the products / services offered and distinct from other previously registered trademarks. 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.
Gradual decline in trademark application success rate in the US
In the five year period from 2016 to 2020, the success rate for trademark applications filed in the US has declined from 59.1% down to 51.7%. This drop is quite significant and basically results in nearly 50/50 chances for a successful trademark registration for individual applicants. Two particular observations can be used to explain this longitudinal declining trend in the success rate for trademark applications.
First, there has been a considerable growth in the number of trademark applications filed in the US over this period. This growth rate surpasses the growth reported in other countries and can be, at least partially, attributed to the growing awareness of the general public and entrepreneurial community about the importance of registering a trademark. While this is a great sign for the future of brand protection as well as individual brands, it also means that the proportion of trademark applications filed by established institutions and corporations with experience in the trademark registration process is declining, hence, leading to the lower success rate for all trademark applications.
The second reason relates specifically to the level of the enforcement of the intellectual property rights displayed by the USPTO. An attentive observer can easily notice that numerous highly descriptive trademarks have been successfully registered in the US in the past. Stricter adherence to the official rules displayed by the USPTO representatives results in similar applications being rejected nowadays for lacking sufficient distinctiveness to allow consumers to identify and distinguish the particular brand from other competitors on the market.
Ways to mitigate the rejection of the trademark application
There is no reason to panic about this declining trend in the success of trademark applications in the US! There is however all the more reason to pay closer attention to the strategies that can be used to maximise the chances of a successful trademark registration.