What are the Reasons for Trademark Application Rejection?

Trademark is an Intellectual Property that comprises a sign, logo, designs, or phrase so that you can easily identify and distinguish the Trademark from your opponents. It’s the best way to safeguard your thoughts and ideas from being copied or misused by any others. So to protect your Trademark, you need to attain Trademark Registration under the Trademark Act, 1991. However, according to the Trademark statistics of USPTO (United States Patent and Trademark Office), most of the application for Trademark Registration gets rejected. That means that the Office Actions (a letter issued by the Examining Attorney assigned to examine your application) are issued against the huge majority of applications. In this blog, we discuss different reasons for Trademark Application Rejection.

An Overview of Trademark

Before we go through the reasons for Trademark Application Rejection, let us first understand the meaning of the Trademark. Trademark is a type of IP (Intellectual Property) consisting of a recognizable design, name, or logo which identifies products and services of a particular company, trademarks used to identify services are called service marks, and the owner of a trademark can be a person, company or any business organization. A trademark may be located on a label, package, or on the product itself. With the Trademark, you can make sure that your products and services have distinctive and unique branding in the market.

Also, Read: A Complete Guide on Difference between TM and ® Symbols

Types of Trademark Symbols

Following are different types of Trademark Symbols, and they are used by the Controller General of Patents, which tells the Trademark Registration status:

• TM Symbol: It is used for the product, and this symbol is only used when the Trademark is not completely registered. The main objective of using the TM symbol is to make people aware of this particular brand.
• SM Symbol: This is used for the services, and it is used when the Trademark is not registered, and the business organization or any company can use the SM symbol.
• R Symbol: This symbol is used by the company only when the Trademark is completely registered, and you have received the Registration Certificate for the Registrar.

Different Reasons for Trademark Application Rejection

A registered trademark helps the owner of a trademark prevent the unofficial use of the mark and create a distinctive intangible for a company’s product. If the application for Trademark is accepted and the mark is registered under the Act, then the hard work spent on the branding is safeguarded. But there are some cases where the Trademark is not registered due to some reasons.

Following is the list of all the possible reasons for Trademark application rejection:

• Application or Registration Process: During the Trademark Registration process, after submitting the application form along with all the related documents, the examiner will examine the application form and check all the documents. They check the application carefully, and if they find anything missing or incorrect information in the application of the documents, then they will straight reject the Trademark application.
• Generic Words or Terms: A trademark representing the particular product activity or the actual business idea is most likely to get rejected because of the generic terms or words used. For example, if a bike manufacturing company wants to register its brand name by putting the bike manufacturing units at its end, then the registration will be rejected. In day to day advertisements, we always see the name of the brand as TVS, Hero, Bajaj, etc.
• Descriptive Words: If any mark contains any descriptive words that are usually used to identify the product. For example, if a company makes hot coffee, they cannot use hot coffee as a brand name. This will reject your trademark application.
• Similar to an Existing Registered Trademark: During the Trademark Registration Process, first you have to carefully check whether your Trademark is similar to other registered Trademark or not, and you can do the same by doing a public search on the website of Patent. If you use a mark that is similar to an already registered Trademark, then the examiner will found that, and they can reject the trademark application.
• Misguiding Terms: Use of any slang words, provoking words, critical words or disgusting terms are often rejected the Trademark application by the Trademark Registrar.
• Official words or designs: If the Trademark comprises any certificated terms, design or any words, In that case, the application may get rejected by the examiner as it against the public welfare, and it can incorrectly influence the customers who are overlooked by an official body.
• Not Hiring a Trademark Lawyer: It is also advisable to hire a Trademark Lawyer before registering your brand name to avoid Trademark rejection. Moreover, it also saves you time.
• Some Conditions and Restrictions: If the examiner is totally satisfied by the mark but requires some conditions to the use of the appearance of the mark, then they may also reject the Trademark application.

How Can You Avoid Trademark Application Rejection?

Before filing an application for the Trademark Registration, first, ensure and understand all the pre-filling measures which reduce the Trademark rejection risk. Following are some points to avoid Trademark application rejection.

• Before start filing a Trademark application, first, you should do a quick search of the Trademark in the USPTO Trademark Database to reduce the risk of getting a similar mark which may reject the application by the examiner. Searching for the same mark is very easy rather than search for other marks that may be regarded as confusingly the same, which requires some experience and skills.
• The identification of products and services will need careful consideration. You want to use descriptions that followthe USPTO Trademark Standards and decrease the overlapping with the products or services of any similar registered Trademarks.
• One possibly serious mistakes are identifying too many products or services in a use-based application when the applicant has not used the mark on all of its products acknowledged in the application. There is no wrongdoing in identifying too many products or services in an Intent-To-Use application, but such error in a used-based application can be lead to avoid registration if not altered in time.

What can you do if your Trademark Application gets refused?

If your Trademark Application gets rejected by the Trademark Registry on the grounds as mentioned in Section 9 and 11 of the Trademark Act, then you have an exclusive right to make a request to the Appellate Board against the Registrar of Trademark Registry. You may also need to appeal within three months of Trademark Rejection, and you can file the appeal also even after three months of time if some issues were there.

Conclusion

Above, we discuss all the possible reasons for Trademark Application Rejection. However, it is always advisable to hire a professional Trademark lawyer after starting your Trademark Registration process. It’s also vital to remember that you should follow all the restrictions and guidelines of Trademark Registration to avoid all the above-mentioned reasons for Trademark Application Rejection.

Also, Read: A Complete Guide on Procedure for Brand Registration in India