Even with careful preparation, trademark applications can face rejection. Understanding what happens if your trademark is denied and knowing your response options can help you turn a denial into successful registration.
This guide explains common rejection reasons and proven strategies for overcoming trademark refusals.
Why Do Trademark Applications Get Denied?
1. Substantive Objections
Descriptive or Generic Terms
Your trademark directly describes your goods/services or uses generic terms that everyone in your industry needs.
Common Examples:
- ""FastPizza"" for pizza delivery services
- ""SoftTouch"" for fabric softener
- ""CloudStorage"" for data storage services
- ""24/7Legal"" for law firm services
Why This Happens: Trademark law requires marks to distinguish your business from competitors. Descriptive terms don't meet this standard because they merely tell consumers what you offer rather than who offers it. To learn more, read What can and cannot be trademarked?
Likelihood of Confusion
The examiner found an identical or similar prior mark in your class (or a related one).
Solution: File evidence distinguishing your services, narrow your description, or seek coexistence.
Deceptive or Misleading Content
Your trademark suggests qualities, characteristics, or geographic origins that don't match your actual goods/services.
Examples:
- ""OrganicClean"" for non-organic cleaning products
- ""SwissWatch"" for watches not made in Switzerland
- ""InstantResults"" for services that require extended time
2. Formal Objections
Insufficient or Improper Specimens of Use
Your submitted evidence doesn't adequately show how you use the trademark in actual commerce.
Common Specimen Problems:
- For goods: Labels, packaging, or product images don't clearly display the trademark
- For services: Website screenshots, brochures, or advertisements don't show trademark use in service promotion
- Poor image quality: Blurry, small, or unclear trademark representations
- Mock-ups vs. actual use: Digitally created examples instead of real commercial use
Incomplete Application Information
Missing or incorrect required details prevent proper examination.
Frequent Formal Issues:
- Incomplete applicant information (missing business entity details)
- Incorrect Nice Classification numbers or descriptions
- Missing Power of Attorney for represented applicants
- Improper fee payments or insufficient amounts
- Unclear trademark drawings or representations
Options After a Denial
1. Respond to the Office Action
An office action is an official letter explaining why your trademark was refused and what you must do to overcome the rejection.
If you receive an office action explaining the refusal, you typically have 2–3 months to:
- File written arguments and legal citations
- Amend your mark or description
- Supply new specimens or declarations
A successful response can overcome many substantive and formal objections.
2. Appeal to the Trademark Board
When an examiner maintains the refusal, you can appeal (e.g., to the TTAB in the U.S., or equivalent in other jurisdictions).
Appeals require:
- A formal notice of appeal
- Written briefs
- (Sometimes) an oral hearing
Appeals succeed if you show the office applied its rules incorrectly.
3. Amend & Refile
If the refusal is insurmountable (say, for a purely descriptive word) you may:
- Modify the mark to a stronger version
- Refile in fewer classes to avoid conflicts
- Choose a new, inherently distinctive trademark and start fresh
4. Seek a Coexistence or Consent Agreement
A coexistence or consent agreement is a legal contract between trademark owners that define how similar marks can coexist without consumer confusion.
Ths agreement:
- Identifies both parties and their respective marks
- Defines the specific classes, goods/services and territories for each mark
- Commits neither party to oppose the other’s use or registration under agreed conditions
Note: Examiners may ignore agreements if they believe consumer confusion remains or public interest is harmed.
Remember, trademark denial isn't the end of your brand protection journey. With proper strategy, most rejections can be overcome through appropriate responses, appeals, amendments, or agreements. And if needed, professional trademark services can guide you through each step.
The key is choosing the right approach for your specific situation and business needs.