Seattle Trademark Lawyer

The U.S. Patent and Trademark Office can deny your application for federal trademark registration for any of the reasons stated in Section 2 of the Trademark Act, 15 U.S.C. § 1052.

There are about twenty. However, you can forget about most of them. For practical purposes, the main ones to worry about are: likelihood of confusion, mere descriptiveness, deceptive misdescriptiveness, primarily merely a surname, and unlawful use. These objections are summarized below. 

• Likelihood of confusion. Frequently, the most tricky objection to consider is whether your mark is confusingly similar to a prior filing. This mainly means that your mark is too similar to the mark reflected in a prior-filed application or registration, in the context of the associated goods and services, such that ordinary consumers would likely, or probably, mistakenly believe that your goods or services come from the prior filer. This includes both identical trademark matches, as well as close variants. You even might have superior rights in your mark because you used before the cited prior-filer, but the USPTO still will deny your application if someone else filed before you. There are potential ways around this objection, but that’s the basic gist.
• Mere Descriptiveness. A descriptive trademark immediately conveys information about the good or service being sold in connection with the mark, e.g., SEATTLE’S BEST COFFEE or SPEEDY AUTO GLASS. Such marks leave nothing to the imagination. The USPTO objects to descriptive trademarks because they primarily provide information, rather than identify the maker or provider of the branded good or service. In other words, the mark mainly provides information, rather than functions as a trademark by identifying the source. Longstanding use can convert a descriptive (and unprotectable) trademark into a protectable and registrable one, but doing so usually requires at least five years of “substantially exclusive,” continuous use. Otherwise, your application to register such a mark will be denied (though it may be possible to obtain registration on the Supplemental Register).
• Deceptive Misdescriptiveness. If a shirt sold under the brand COTTON actually contains cotton, you should expect the USPTO to object based on grounds of descriptiveness. However, if the shirt doesn’t actually contain cotton, the mark wouldn’t be descriptive. The examiner instead would likely object that the mark is deceptively misdescriptive, i.e., that it claims to have an attractive attribute, but it actually does not. In an effort to protect consumers, such marks cannot be registered.
• Primarily Merely a Surname. No one should have a monopoly over using a surname (last name) as a trademark. Therefore, if consumers are likely to perceive a mark as being “primarily merely a surname,” the examiner will object. The analysis includes the mark as a whole, so including other word or design elements can sidestep the objection. So can longstanding use, which is why MCDONALD’S and FORD can be registered.
• Unlawful Use. Don’t forget that even though marijuana might be legal in your state, it’s still not legal at the federal level. Same with many CBD uses. If your good or service isn’t kosher under federal law, it’s a waste of money to apply to register your mark with the USPTO. Federal laws could change, but until they do, violating one can prevent your mark from being registered with the feds (though state registration could still be possible).

There are other reasons why your application to register a trademark with the USPTO could be denied, but in my practice, these represent the most common reasons. There are some smart workarounds — both before an application is filed, and after an examiner objects — so it often pays to work with a trademark lawyer. However, knowing the basic reasons why a mark can be refused registration is a good first step.

The U.S. Patent and Trademark Office usually examines applications for trademark registration in the order in which they are received.

This means that even if you have priority of rights, your application will be denied if someone filed an application before you for which your trademark is likely to cause confusion — even if the prior filer only beat you by a few minutes or a few days. In such a case, you’d normally need to oppose the prior-filed application to block it (if the application is still pending) or petition to cancel the registration (if the registration has issued).

However, a narrow exception exists. If you are involved in actual or threatened infringement, pending litigation, or have a need to register your trademark in order to secure a foreign registration, for $100, you can petition to make your application “special.” If accepted, your application is given expedited treatment and leap-frogs prior filings.

An application for registration of a mark that was the subject of a previous registration that was inadvertently cancelled or expired will be made “special” upon request. No petition is required.  

Being on the verge of launching an advertising campaign, however, doesn’t cut it.

This little-known device can avoid the need for procedural acrobatics. Why wait for a prior-filed application to be published or go through the pain of opposing it if you don’t have to? The smart answer is that you shouldn’t — as long as you’re “special.”

One of my clients received a new type of office action from the U.S. Patent and Trademark Office. It was in response to a declaration of use filed under Section 8 of the Lanham Act to renew its registration for five more years. The USPTO stated it wanted more proof that each item listed on the registration certificate was still in use — even though my client’s filing was accompanied by an affidavit to that effect.

“Really?” the USPTO seemed to say. “Prove the continued use with specimens showing that each branded item is still being sold.”

According to the government, the inquiry was random. It explained that ”[t]he USPTO is performing random audits of US trademark registrations to assess and promote the accuracy and integrity of the trademark register. This registration has been randomly selected for audit to determine whether the mark is in use with all of the goods and/or services identified in the registration.”

“To comply with the audit,” the USPTO added, “you must submit proof of use of the registered mark for two additional goods and/or services per class. If proof of use for the goods and/or services identified is not available, the identified goods and/or services and any other goods and/or services not currently in use should be deleted from the registration.”

For those audited, this means more work. Nonetheless, I like the idea. Registrations that are renewed for all goods and services listed on a certificate — regardless of whether the mark is actually still being used for all such items — wrongly clutter up the trademark registry. Such “zombie” registrations can prevent actual trademark users from registering similar marks in connection with similar goods or services. They also give the registrant the appearance of trademark rights beyond those it actually has.

An audited registry better serves those who qualify for its benefits. It also gives our trademark registration process more credibility. I think the result is worth the effort.

Trademark owners, take note. If you file an application for federal trademark registration, you should keep an eye out for misleading mailings from unscrupulous vendors trying to sell you (or trick you into paying for) things you don’t need.

This is one reason the U.S. Patent and Trademark Office warns as follows:

“By filing this application, you acknowledge that YOU HAVE NO RIGHT TO CONFIDENTIALITY in the information disclosed. The public will be able to view this information in the USPTO’s on-line databases and through internet search engines and other on-line databases.”

Heed this warning. Fraudsters troll the PTO’s public database and send applicants phony invoices and other official-looking mailings. Their names frequently mimic the PTO’s, and include words like “United States,” “U.S.,” “Trademark,” “Registration,” “Office,” and “Agency.” Ignore them. They are fraudulent. The senders count on a handful of trusting or careless recipients out of thousands to pay their “invoice.” Don’t be one of them.

All official mailings will come from the PTO in Alexandria, Virginia. Or, if your lawyer filed the application, official word will come solely from him or her. All official PTO emails will have .uspto.gov in the sender’s address.

There’s no way to get around providing your contact information when filing for federal trademark registration. That shouldn’t dissuade you from making a filing; just be smart when doing so. Thoroughly ignoring any unsolicited invoices you receive is the best way to take the profit motive out of these scams. You also can report them to the PTO at TMFeedback@uspto.gov.

It pays to be strategic in describing one’s goods and services when applying to register a trademark with the U.S. Patent and Trademark Office. Following are some considerations:

• Be vague but accurate. Generally, the vaguer a description is, the more intellectual property “real estate” one gets in the resulting trademark registration. An applicant needs to be accurate, but the more words it uses to describe the goods or services associated with its trademark, the more it limits its claim. To get the broadest claim, say “shirts,” for example, not “women’s long-sleeved silk t-shirts.”
• Consider a narrow description. Though broad claims are often best, sometimes it makes sense to describe goods and services with more specificity. Narrow claims can help put distance between an application and a prior filing, which can reduce the chances of a drawing a likelihood of confusion objection.
• Consider an “off-target” description. Ideally, a trademark owner’s application would cover its core goods or services. But sometimes that’s not possible — either because the trademark owner’s core offerings are illegal at the federal level (say, because they involve marijuana), or because a prior filing would block such an application. An “off-target” description that omits the trademark owner’s core offerings can sometimes make a more limited registration possible. The umbrella of protection that extends from such a registration — even one that does not cover the applicant’s core goods and services — is often much better than no registration at all.
• Minimize descriptiveness and genericness objections. Being smart in describing the goods and services can help avoid a descriptiveness objection. The PTO can deny an application if it immediately conveys information about the associated good or service. While descriptions need to be forthright, trademark owners need not invite this objection with careless wording. In this respect, a vague-but-accurate description can minimize a “merely descriptive” objection. The same is true with avoiding genericness objections. If the applicant defines the goods or services as being the same as the mark, the PTO has no choice but to deny the application.
• Use the PTO’s pre-approved descriptions. Adopting one of the thousands of descriptions the PTO has already blessed reduces the chance the PTO will quibble with the description. Less importantly, but also a bonus, using a pre-approved description enables a TEAS-PLUS filing, which saves $50 per class. Of course, such descriptions are only appropriate if they are accurate and otherwise suit the trademark owner’s needs. Otherwise, a strategic free-form description is the ticket.