Clients who have recently had their trademarks refused often ask, “can you use a trademark that was rejected by the USPTO?” A trademark rejection from the United States Patent and Trademark Office does not necessarily mean the process is over. A rejected trademark may still be used in the marketplace, but those that were rejected due to too many similarities with another trademark may need to be reevaluated. Additionally, trademark refusals by the USPTO may be appealed with the Trademark Trial and Appeal Board (TTAB). For more information on available legal options after a trademark refusal, contact the intellectual property lawyers of War IP Law today at (202) 800-3754.
What Happens When the USPTO Refuses a Trademark?
After a trademark application has been submitted, a trademark examining attorney for the USPTO will review it and either deny or accept the request. Applicants have the right to submit a request for reconsideration if the request is denied. This leads to a second review from the trademark examining attorney, who has the option to either deny, accept, or request additional information.
According to the USPTO, a second rejection is the final one in this process. However, applicants who receive two rejections still have options, including filing an appeal. A final decision by the trademark examining attorney must be made before an appeal may be filed.
Appealing a Trademark Refusal by the USPTO with TTAB
Applicants who wish to appeal a denied trademark application may do so by filing an official appeal with the Trademark Trial and Appeal Board (TTAB). The TTAB is a division of the USPTO that handles a variety of trademark-related legal issues. Filing a TTAB appeal is the first step for applicants that disagree with the trademark examining attorney’s ruling.
Trademark Refusal Appeals Process
According to 15 U.S.C. 1070, trademark applicants may appeal a refusal by the USPTO within six months of the final decision. An applicant may go through the following steps in the appeals process:
- A request that the TTAB reviews the trademark refusal of the trademark examining attorney.
- A 3-member panel from the TTAB will review the appeal, including the record of interactions between the examining attorney and the defendant.
- The TTAB will either grant or reject the appeal.
- If the appeal is rejected, the applicant may file a reconsideration request within one month of the TTAB’s decision.
- Second rejections will close the TTAB appeals process.
While a rejected reconsideration request will be the final decision of the TTAB, applicants may file a final appeal with the United States Court of Appeals for the Federal Circuit. Trademark applicants who are considering an appeal may consider contacting the intellectual property lawyers at War IP Law for legal guidance through the process.
Common Reasons For Trademark Rejections
The USPTO has identified several grounds for trademark refusal, which are outlined in the Trademark Manual of Examining Procedure. Examining attorneys are required to consider the following possible grounds for rejecting the trademark, along with any other relevant information:
- Chance of confusion – An examination for possible conflicting trademarks that share significant similarities and offer similar goods and services, which could confuse consumers into thinking both trademarks are from the same source.
- Merely descriptive – Trademarks that merely describe qualities of the product may be rejected, such as attempting to trademark the word “spicy” for a hot sauce product.
- Deceptively misdescriptive – Trademarks that erroneously describe the product, such as a beverage wrongly labeled as containing CBD.
- Ornamentation – Trademarks with a primarily decorative function may be rejected, such as a descriptive phrase on a t-shirt.
- Geographically descriptive – A trademark may be denied if the examining attorney determines the trademark’s significance is related to a geographic location, consumers would likely believe that the goods or services are from that geographic location, and the trademark identifies where the goods or services originated.
- Geographically deceptively misdescriptive – The examining attorney may reject a trademark on this basis if the trademark meets the first two qualifications for “geographically descriptive”, but the goods and services did not actually originate in the geographic location named in the trademark and this misrepresentation could significantly influence consumers to purchase the goods or services.
- Based primarily on a last name – Trademarks that are simply surnames are often rejected.
An experienced trademark lawyer can help applicants analyze why their trademark was rejected and make recommendations for changes that will meet the standards of the USPTO.
When is it Acceptable to Use a Trademark Rejected by the USPTO?
Trademarks are often rejected due to significant resemblance to other trademarks. When this is the case, it is vital to review the trademark and attempt to address these similarities. Using a trademark that is too similar to a trademark owned by another company for similar goods and/or services could prompt a lawsuit from the owners of the other trademark.
But can you use a trademark that was rejected by the USPTO? Under some circumstances, the answer may be yes. If the rejection was based on a reason other than similarity with another mark, continuing to use the mark may be an option. Applicants that are considering using a rejected trademark can learn more about the legal implications by speaking with an intellectual property attorney.
Legal Assistance For Trademark Refusals and Other Intellectual Property Concerns
Successfully applying for a registered trademark or challenging a rejection from the USPTO is a complex legal process. There are a variety of variables that should be considered, including avoiding legal action from conflicting trademarks and protecting the intellectual property of the entity applying for the trademark. Due to these complexities, many trademark applicants seek legal guidance during the application or appeals process.
Applicants who are asking, “can you use a trademark that was rejected by the USPTO?” and other trademark questions can learn more about their legal options by contacting the intellectual property lawyers at War IP Law. We have experience in trademark appeals cases and other intellectual property matters. Call us at (202) 800-3754 to learn how we can help file an appeal and provide counsel on other matters related to a trademark refusal by the USPTO.