What are the substantive reasons for trademark dismissal?

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Written by Tomas Orsula

Senior Trademark Attorney

Trademark applications can be dismissed for various substantive reasons, including:

  • Lack of distinctiveness, which comprises issues where the mark is seen as generic, merely descriptive of the goods or services provided, merely descriptive of the geographic location of the origin of the goods or services, merely descriptive of a person's surname, etc.,
  • Likelihood of confusion between the applicant's mark and a previously registered trademark,
  • Immorality, scandalousness or deceptiveness,
  • Containing certain prohibited elements, such as a national flag.

Substantive issues are generally more complex than non-substantive ones and, therefore, also harder to overcome. Resolution typically includes amending the application or providing compelling legal arguments, often supported by additional evidence.

If you've received a substantive office action, consulting an experienced trademark attorney is highly advised.

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