Help! My Trademark Application Has Been Rejected!
Every so often, I get a phone call from somebody who says, “Help! My trademark application was rejected by the United States Patent and Trademark Office [USPTO].”
Rejections of trademark registration applications are more unusual than patent application rejections. As I’ve explained in previous articles it is normal and expected that a patent application will be rejected at least once. But if the trademark registration application is prepared properly, and the chosen trademark has been researched to make sure there are no likelihood-of-confusion issues, once the trademark application is filled out and submitted, things should go very smoothly. Then, in about eight months, the applicant will receive either a Notice of Allowance (if it’s an “Intent to Use” application) or the actual physical registration documents.
The trademark application looks really easy. It’s online. It’s fill-in-the-blanks. So many people, particularly in small business, feel that it’s going to be easy for them and that they don’t need an attorney. And many times, they don’t. But lots of times, they do receive a rejection.
The majority of these rejections are not substantive. It’s because a box wasn’t checked or a statement wasn’t submitted. For example, if somebody uses their own name or the name of a relative or friend in the business, there has to be a written statement from that person saying that they’re giving this business permission to use their name. Or, if it’s a made-up name, like my client, PHOEBE JAMES™, they have to state that it’s a fictitious name and not the name of a real person. So it may be something simple like that.
Unfortunately, even for an attorney who does not practice intellectual property (IP) law, these rejections are written in the language of the USPTO and are not easy to understand. In fact, they’re downright opaque to the non-professional as well as the non-IP attorney. So, often I can help people very quickly. I just tell them to go back and check the right boxes or submit the missing statement.
But, once in awhile, a rejection is substantive, which generally indicates a likelihood of confusion. That is a serious rejection and takes a significant amount of time for an attorney to overcome.
Many times, people do not realize that changing the spelling of a word doesn’t mean they can have the same sounding trademark as somebody else. For example, I had a client whose trademark is Klowd IX, and it is in clothing, specifically tee-shirts. It turned out there was another item of clothing, shoes, being sold as Cloud 9. Fortunately, before the whole process was over, the original Cloud 9 went out of business, and we were able to achieve registration.
That’s usually the first mistake that non-professionals make in registering for a trademark: They don’t realize that if it sounds the same or close to another word, or if the first word or syllable is the same, they may have a likelihood of confusion rejection. It’s called the “Radio Rule,” meaning it would sound the same or confusing close on the radio. There are many, many examples of this.
Many times, we’ve investigated the owner of the first registration to find out that they’ve gone out of business, but their trademark still hasn’t expired. We have to go to the Trademark Trial and Appeal Board (TTAB) and have a trial on papers to get the first registration cancelled because it’s no longer in use. This takes a lot of work, and a lot of time, and a lot of money.
So, my best advice:
If you’re thinking about registering your trademark, talk to a trademark attorney, and make sure that your trademark has clearance to go smoothly sailing through the US Patent and Trademark Office.
Patricia P. Werschulz
Werschulz Patent Law, LLC
23 North Avenue East
Cranford, NJ 07016