If you have a name that you use or intend to use for selling/rendering goods/services in interstate commerce or in international commerce between the U.S. and another country, then you may want to file for a U.S. trademark registration.
However, there are a number of situations where you may not want to file for a U.S. trademark registration for a particular name. Attorney Tencza has obtained many U.S. trademark registrations during more than 25 years of practicing patent/trademark law, and can provide free feedback on the name you want to file for and give you guidance on whether it is a good idea to file for that name for the particular goods/services.
There are various reasons why you may not want to file for a trademark registration for a particular name. If Attorney Tencza determines that your proposed trademark name is likely to be rejected by the US Patent and Trademark Office, then you can move on to another name, and avoid the cost of filing for a trademark registration that you will never get.
Some of the reasons your trademark application may be refused or suspended include the following:
Trademark is Confusingly Similar to Existing U.S.P.T.O. Trademark Registration/Application
If the USPTO feels there is a likelihood of confusion between your proposed trademark and a prior existing, and currently active USPTO trademark registration your application will typically be refused.
Your proposed trademark does not have to be the same as the particular USPTO trademark registration. Similarities of sound, meaning, and appearance will be looked at to determine whether there is a likelihood of confusion between the proposed mark and the existing mark.
Your trademark application may be suspended based on a prior pending USPTO trademark application using similar likelihood of confusion analysis. If, and when, the prior pending USPTO trademark application matures into registration, your trademark application will then be refused.
Trademark is primarily geographically descriptive or primarily geographically deceptively misdescriptive
If the USPTO feels that your proposed trademark is primarily geographically descriptive or primarily geographically deceptively misdescriptive, then your trademark application will be typically refused. However, this refusal may be overcome by a showing of acquired distinctiveness. Attorney Tencza can help you overcome this refusal in an appropriate case.
Trademark is merely descriptive or deceptively misdescriptive
If the USPTO feels that your proposed trademark is primarily geographically descriptive or primarily geographically deceptively misdescriptive, then your trademark application will be typically refused. However, this refusal may be overcome by a showing of acquired distinctiveness. Attorney Tencza can help you overcome this refusal in an appropriate case.
Trademark is Primarily Merely a Surname
If the USPTO feels that your proposed trademark is merely a surname or last name, then your trademark application will be typically refused. However, this refusal may be overcome by a showing of acquired distinctiveness. Attorney Tencza can help you overcome this refusal in an appropriate case.
Proposed Trademark is Generic
When a proposed trademark is actually a generic term for the particular goods/services, then the USPTO will refuse registration, and that refusal cannot be overcome. For example, one cannot obtain a trademark, stating only the word “Apples” for the goods “Apples”.
Proposed Trademark is Deceptive
When a proposed trademark is found to be “deceptive” then the USPTO will refuse registration, and assuming the finding of deceptiveness is not overcome, then one will not be able to get a U.S. trademark registration for that mark for the particular goods/services. There is a difference between a “deceptive” mark and a “deceptively misdescriptive” mark. Marks that are “deceptive” under 15 U.S.C. §1052(a) cannot be registered, whereas marks that are “deceptively misdescriptive” under 15 U.S.C. §1052(e)(1) can be registered upon a showing of acquired distinctiveness.
Name is used merely for Ornamentation
If a name is used merely for Ornamentation, and not as an indicator of source of goods/services sold/rendered in interstate commerce or international commerce with the U.S., then there may be no trademark use of the name, and the USPTO may refuse registration. However, it is possible to file an intent to use trademark application, and to thereafter use a name as an indicator of source, not merely as ornamentation, after the filing date of the application.
