Grounds For USPTO Trademark Refusal

(TMEP §818 FROM USPTO MANUAL)

(also covered in 15 USC 1051, 15 USC 1052, 15 USC 1053, 15 USC 1127)


The following are substantive grounds for refusal. Registration may be refused on the ground that:

(1) the applicant is not the owner of the mark (15 U.S.C. §1051; TMEP §1201);

(2) the subject matter for which registration is sought does not function as a mark (15 USC 1051, 15 USC 1052, 15 USC 1053, 15 USC 1127) because, for example, the proposed mark:

(a) is used solely as a trade name (TMEP §1202.01);

(b) is functional, i.e., consists of a utilitarian design feature of the goods or their packaging (15 U.S.C. §1052(e)(5); TMEP §§1202.02(a) et seq.);

(c) is a nondistinctive configuration of the goods or their packaging (TMEP §§1202.02(b) et seq.);

(d) is mere ornamentation (TMEP §§1202.03 et seq.);

(e) is the generic name for the goods or services (TMEP §§1209.01(c) et seq.); or

(f) is the title of a single creative work or the name of an author or performing artist (TMEP §§1202.08 and 1202.09 et seq.);

(3) the proposed mark comprises immoral or scandalous matter (15 USC 1052(a); TMEP §1203.01);

(4) the proposed mark is deceptive (15 USC 1052(a); TMEP §§1203.02 et seq.);

(5) the proposed mark comprises matter that may disparage or falsely suggest a connection with persons, institutions, beliefs, or national symbols, or bring them into contempt or disrepute (15 USC 1052(a); TMEP §§1203.03 et seq.);

(6) the proposed mark comprises the flag, coat of arms or other insignia of the United States or any State, municipality, or foreign nation (15 USC 1052(b); TMEP §1204);

(7) the applicant’s use of the mark is or would be unlawful because it is prohibited by statute (TMEP §§1205 et seq.);

(8) the proposed mark comprises a name, portrait or signature identifying a particular living individual without the individual’s written consent, or the name, portrait or signature of a deceased president of the United States during his widow’s life, without written consent of the widow (15 USC 1052(c); TMEP §§1206 et seq.);

(9) the proposed mark so resembles a previously registered mark as to be likely, when used with the applicant’s goods and/or services, to cause confusion or mistake, or to deceive (15 USC 1052(d); TMEP §§1207 et seq.);

(10) the proposed mark is merely descriptive or deceptively misdescriptive of the applicant’s goods and/or services (15 USC 1052(e)(1); TMEP §§1209 et seq.);

(11) the proposed mark is primarily geographically descriptive of the applicant’s goods and/or services (15 USC 1052(e)(2); TMEP §1210.01(a));

(12) the proposed mark is primarily geographically deceptively misdescriptive of the applicant’s goods and/or services (15 USC 1052(e)(3); TMEP §1210.01(b)); or

(13) the proposed mark is primarily merely a surname (15 USC 1052(e)(4); TMEP §§1211 et seq.).


USPTO Trademark Manual of Examining Procedure (TMEP) §818 http://tess2.uspto.gov/tmdb/tmep/0800.htm#_T818


For information on Grounds for Opposition and Cancellation of Trademarks, see Merely-Descriptive.com. For more information on how a proposed mark must function, see Function As A Mark.



GROUNDS FOR REFUSAL: IF YOU HAVE RECEIVED A REFUSAL FOR ONE OF THE ABOVE REASONS OR OTHERS--CALL US.

Overcoming refusals often takes a combination of steps, done correctly. Replying to Office Actions correctly is a good investment for a business. A trademark may be one of the most valuable pieces of Intellectual Property that a business can have, and what legal rights come out of the application & registration are crucial to using that trademark to its fullest potential. Trademark rights originate from common law rights and understanding the legal terms that are defined in case law and how they are used in the federal statutes involved is essential. See What to Expect from a Not Just Patents Trademark Registration.  

A federally registered trademark has many more rights than an unregistered mark, a delay of several months or years in obtaining that registration may be detrimental to your business. A mark that does not meet federal registration standards may also have difficulty proving common law rights since the principles are based on the same concepts. See Inherently-Distinctive.com for more information. For instance, the same federal registration standards for geographic marks apply to common law marks. For more information on geographic terms see http://merely-descriptive.com/geographictrademark.html.  Whether or not a trademark receives federal registration depends on how the application is crafted AND the mark. For instance, a bad specimen that does not show the mark being used in a valid manner may be the cause of a trade name refusal, a merely descriptive refusal or a mere ornamentation refusal. A Not Just Patents Trademark Attorney can help you sort through potential specimens and find a good example and recommend changes for future use to assure that rights are protected.


Even if a trademark owner receives a registered trademark, the mark can be challenged if the trademark owner did not do a thorough trademark search and clearance to assure that there were no prior users. The USPTO only examines a trademark application against other FEDERAL registrations for the RIGHT TO REGISTER, they do not determine if an applicant has the RIGHT TO USE the mark. The Lanham Act provides that a registered mark, even if it has become incontestable, still may be challenged "to the extent, if any, to which the use of a mark registered on the principal register infringes a valid right acquired under the law of any State or Territory by use of a mark or trade name continuing from a date prior to the date of registration under this chapter of such registered mark." 15 U.S.C. 1065 as quoted in Advance Stores Co. Inc. v. Refinishing Spec. Inc., 188 F.3d at 411 (6th Cir., 1999).


Not Just Patents ® Legal Services do not just involve a brief federal trademark search looking for similar names that are already registered and filling out the form for a federal trademark application.The goals of our Trademark Services are to comply with federal registration requirements, give your trademark the maximum rights under the law   AND avoid infringing other registered and unregistered trademarks to protect your mark in an economical manner.  Rushing to file an application without knowing if it is being done to maximize benefits may result in rights that are weak or even worse, an abandonment, because the application contained fatal flaws.


Not Just Patents ® Legal Services provide a broad range of services for Intellectual Property Protection. Call us with questions at (651) 500-7590. Don’t assume that protecting your legal rights is too expensive if you haven’t even called to see what it would cost. See Why Not Just Patents?  if you have already applied and been refused. In today’s economy (and for the future), Intellectual Property may be one of the best ways to invest in your business.



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