Trademark law is designed first to protect consumers in the marketplace who are looking for consistency and stability in the products and services they buy. It is a secondary benefit of trademark law that it also products brand owners from unfair competition. Thus, when the PTO refuses an application, its primary focus is on the consumer who would encounter your trademark in the marketplace.
In some cases, the refusal is based upon substantive grounds—either your mark is too confusingly similar to another mark, or it so closely describes the goods and services that the PTO won’t let you have exclusive rights to that mark. An example of a mark that was found to be too descriptive was “APPLE PIE” for potpourri, which presumably was apple-pie scented. If your competitors wouldn’t be able to accurately describe a competing product without using the mark you claim, you can get a good sense of whether the mark is going to be considered too descriptive.
Often, in these cases, the Examining Attorney can be persuaded that the mark should be registered. In the case of two marks that are confusingly similar, we can point out the differences between the marks and the goods and services that are covered, and highlight to the Examining Attorney why your customers are too savvy to be confused between your services and that other guy’s. In cases of descriptiveness, we can send the Examining Attorney evidence of all your advertising efforts and how strongly you have been promoting the mark to show that the mark has significance in the minds of your customers. These are just examples of a few of the arrows in our quiver to shoot down initial refusals of a trademark application.
You may also have received a refusal on the grounds that your mark is generic. Trademark law would not allow a registration of the word “SOFTWARE” for software development company, or SHOES for a shoe store. In some cases we can overcome a genericness refusal, although these present more of a challenge.
Rarely, we will see refusals on the grounds that a mark is scandalous (gasp). Those are always fun arguments to write.
Trademark refusals can often be overcome, but it is important not to delay in calling an attorney to help you draft the response. Once an Office Action issues, you have six months to respond. Otherwise, the application goes “abandoned” and you have to start all over again, meaning more filing fees and a loss of the advantage of your earlier filing date.
But what if it is not the Examiner who has objected to your application, but a private party? Once your application has gotten past the Examiner, it goes through the “publication phase,” where it literally gets printed in a big thick journal and posted on the USPTO website for anyone to see. If a third party thinks that it may have rights in your mark or a very similar one, whether or not that mark has been registered with the USPTO, then she has a right to oppose the registration of your mark. Oppositions are a lot like regular litigation in court, so it is important for you to have a lawyer on your side. You will receive a Notice of Opposition well before a complaint is filed, so you have time to prepare and strategize, but you should call a lawyer right away in these cases.