Denial of Trademark Registration

When applying for a trademark you may run into some difficulties that may cause your trademark application to be denied. If you still face denial of your application, you have options to appeal the decision.

Reasons for the Denial of a Trademark Application

If you submit an incomplete or poorly developed application, you are almost guaranteed to receive a denial. Your trademark attorney can help you draft your application to avoid this pitfall, but there are several other issues that can result in the denial of an application.

The most common reasons for trademark denials include:

the presence of a similar, pre-existing trademark already registered; your mark is too generic; your mark consists of immoral, disparaging, or deceptive matter; your mark contains the name, image, or signature identifying a living individual without their written consent; your mark contains the name, image, or signature of a deceased President of the United States while his widow is still alive, unless consent is given by the widow;and the mark is used solely as a trade name.

How to Respond to the Denial of a Trademark Application

If your trademark application is denied you will receive notice from the USPTO in the form of an Office Action. The notice of denial will include reasons for the decision, which your trademark attorney can review and discuss with you. You are given a written notice of the time you have in which to submit a response to the decision, typically 6 months.

At this time, your trademark attorney can help you investigate the reasons for the denial of your trademark application. This information is a critical part of formulating your response, as it needs to address the problems cited in the denial notice.

After your initial response to the denial of your trademark application is filed, the USPTO will issue another decision. Should you receive a subsequent denial, you will need to reformulate the mark before reissuing a response.

Hiring a California Trademark Attorney

It's important to have the guidance of a professional when you are applying for a trademark. Having the advice of a trusted trademark attorney from the start will help you avoid errors in the trademark application process and avoid immediate denial. If you find yourself facing denial of your application, attorneys can help you determine the cause and help rectify it in your response.

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Trademark Versus Copyright: Which Applies to Your Content?

In my work, I encounter this particular confusion quite regularly - clients (and adverse parties) seem to think that copyright applies to both a website and its domain name. But this belief is incorrect. Here's a simple, easy way to remember it:

Copyrights are for Content. Trademarks are for goods/services.

So, a client can claim a copyright in the content written on a blog, a website, etc. However, you can't claim a "copyright" in the domain name that hosts your website: it's not really content. It could be, however, a name linked to your goods or to a service that you provide. If so, you can claim trademark rights in that name.

[Note that these rights usually apply whether you register with the Federal government or not! But registration certainly helps your arguments later on, if it comes to that...]

For further information, the US Copyright Office website has a document that explains in greater detail what kind of things can get copyright protections, including literary, musical, and dramatic works. And, likewise, the US Patent and Trademark Office (usually abbreviated USPTO, or just PTO) has a document that explains trademarks in greater detail - it describes them as "a word, phrase, symbol, or design, or a combination thereof, that identifies and distinguishes the source of the goods [or services] of one party from those of others...." Each US state may also offer trademark or copyright registrations, typically at a lower filing cost, although the usefulness of local registrations may not be great as federal registrations.

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