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Common Grounds for Refusal of Trademark Registration

Fri Apr 8th, 2022 by  Trademarks

Trademark registration confers a host of benefits that are not available to common law trademarks. For instance, registering your trademark with the United States Patent and Trademark Office (USPTO) gives you rights throughout the United States and allows you to sue for trademark infringement in federal courts. Federal registration also provides nationwide constructive notice that your trademark belongs to you. However, the USPTO frequently refuses trademark applications for a variety of reasons. A trademark search executed by an Alabama trademark search attorney can help you avoid stumbling into one of those pitfalls. 

The Trademark Is Confusingly Similar to Another Trademark 

One of the most common grounds for refusal is that there is a likelihood of confusion with an existing mark. When you apply for trademark registration, the USPTO will conduct a search of all existing registrations to compare your trademark to others. Even if your trademark is not exactly the same as another one, the USPTO may refuse registration if it finds that the two marks are sufficiently similar to each other and cover similar products or services. 

The Trademark Is Merely Descriptive

The strongest trademarks are those that are the most unique or distinctive. These types of marks instantly identify products and distinguish them from those of others. Merely descriptive marks generally do not perform that function. For example, an application for registration of the mark “PIZZA” for a pizza parlor likely would be refused because the term “pizza” is merely descriptive of the product it covers. 

The Trademark Is Primarily Geographically Descriptive

Geographic descriptiveness is similar to mere descriptiveness. A trademark is geographically descriptive if (1) the primary significance of the mark is a generally known geographic location, (2) purchasers would think that the goods originate in the geographic location, and (3) the mark identifies the geographic origin of the goods.  For example, an application for registration of the mark “THE BIRMINGHAM ICE CREAM COMPANY” likely would be refused as geographically descriptive.   

The Trademark Is a Surname

Surname trademarks — e.g., “SMITH’S,” “ALLEN’S SOAP,” etc. — generally are not registrable. This is because purchasers are unlikely to see a person’s surname as providing source-identifying information. However, this is not an ironclad rule; the rarer or less common the surname is, the more likely it is to be able to function as a trademark.  

The Trademark Is Ornamental 

Trademarks that are ornamental or purely for design purposes are not registrable with the USPTO. However, it can often be difficult to draw the line between mere ornamentation and source-identifying information. Some examples of brand elements the USPTO considers to be ornamental include quotes displayed across the front of a t-shirt, organization logos on the front of a hat, stitching designs, and floral patterns, among others. 

Avoid a Registration Refusal with the Help of an Alabama Trademark Search Attorney

A comprehensive trademark search executed early in the trademark application process can often prevent surprise registration refusals. To get started, please contact an Alabama trademark search attorney at AdamsIP by calling 251-289-9787 or by using our online contact form. We assist clients throughout the state including Mobile, Huntsville, and Birmingham.