Reasons for Rejecting a Trademark Application

According to USPTO trademark data, the majority of trademark applications are rejected on the first try. Only 34.4 percent of TEAS Plus applications and 16.3 percent of TEAS RF applications are approved on the first try. As a result, the great majority of trademark applications receive Office Actions.

While there are a variety of reasons for trademark application rejections, they generally fall into one of two categories:

1. Refusal of registration (substantive Office Action); and
2. Non-substantive issues.

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With the exception of questionable trademark disclaimers, non-substantive concerns are relatively simple and inexpensive to rectify. Requests for modifications or additional information about the following are examples of non-substantive issues:

• Identification of goods and services.
• Background on the meaning of the mark in the industry or in a foreign language.
• Description of the mark if a stylized logo (design mark) is involved.

Overcoming a substantive refusal to register your trademark will take significantly more time and cost. The following are some examples of substantial grounds for denying a trademark application:

• a likelihood of confusion with a previously filed or registered trademark (i.e., your mark is too similar to one filed before yours);
• merely descriptive mark (i.e., your mark just expresses a quality, feature, or characteristic of the goods or services identified in your application); and
• Failure to identify a trademark's source or function (e.g., informational matter, widely used messages, etc.).

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