How to Avoid Trademark Refusal

Just google trademark registration, and you will see a bunch of under-$100 trademark services online. How is it possible? There is a hidden cost of trademark registration: your mandatory response to the USPTO’s initial conclusion that your mark is not registerable. (See Possible Grounds for Refusal of a Mark | USPTO) By the way, this type of office actions are quite common.

The USPTO’s trademark application itself is simple because it is not for a “grant” of trademark rights but “registration”. In other words, your trademark application is to register a trademark right you already possess. Therefore, you only need to submit who owns the right, what is your mark, description of products/services your are using your mark for, and the evidence of such use.

Of course, you have to pay government fees, which is extra to most services’ advertised cost, but it is fairly low at $250 per international class in 2021. An international class includes a wide variety of similar goods/services. In fact, there are only 45 international classes as of today. Hence, unless you’re a conglomerate, you are likely to register your mark with a few international classes at most.

When you receive an office action stating refusal grounds, they are saying you don’t have a trademark right.

The headache is that when you receive an office action, you will incur a lot of extra cost in addition to the initial application cost. Fortunately, there is no extra government fee, but the time and resources required for responding an initial rejection is quite penalizing.

Most online trademark services will try to refer you to one of their affiliated attorneys or sometimes unauthorized legal consultants. This referral, I believe, is where they generate most of their profit. There is simply no guarantee if you will overcome the stated refusal grounds, but if you don’t use their service, you’re either abandoning your trademark application or in need of independently finding an attorney.

Long story short, as an attorney who practiced trademark law since 2012, I hate taking over trademark cases filed pro se or by unauthorized agents. It is time-consuming to learn about the case and correct mistakes even before starting to tackle the actual issues raised by the trademark examiner at the USPTO.

Remember, the hidden cost of trademark registration lies on the chances that the USPTO might initially refuse your application through Office Action.

Avoid office actions at all cost.

As mentioned earlier, you are simply registering pre-existing your trademark. So, you should wonder if it is possible to avoid the USPTO saying there is problem with your trademark right? Well, that’s what your trademark agent should do.

Some might say you should always go to the extreme to secure a right that is as extensive as possible. I respectfully disagree.

Trademark right is not to protect your ingenuity or creativity in trademark itself, but the good will generated between you and your customers who identify your trademark as an identifier that the product or service is originated from you.

Therefore, when you’re picking a fight with competitors who use similar marks or the USPTO who refuses the registration of your mark, you are actually diminishing your trademark right in doing so.

Here comes a checklist to avoid unnecessary office actions.

Do your due diligence search with TESS and internet search engines.

On TESS provided by the USPTO, you can search all the trademark applications and registrations, including abandoned and cancelled ones. It takes less than a week for a new application to show up on the system, so it is probably more up-to-date than internet search engines, mainly relying on crawlers to index a new product or service available on the internet after quite a while.

On the other hand, TESS does not support natural language search or expansive suggestions. In other words, you must use proper keywords, Boolean operators and fields.

"003"[ic] and (sephora)[bi]

Above example allows you search trademarks with the text “sephora” while targeting the international class 3, namely:

Non-medicated cosmetics and toiletry preparations; non-medicated dentifrices; perfumery, essential oils; bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations.

While Sephora is better known for its retail service, it also has their own brands of products as shown below.

From there, you should expand your search using truncation such as $ and ?.

"003"[ic] and (s?ph?r?)[bi]

Oftentimes, a mere variation of a vowel or two could be deemed confusingly similar. I honestly don’t see any confusing marks, but if I stretch, SAPHOROS may be confusingly similar to SEPHORA.

If you found similar LIVE marks, avoid confusion.

Results with only Serial Number but Reg. Number are just applications. And when the Status says DEAD, the application or registration is abandoned or cancelled. When the status says LIVE, it at least has a chance to become a registration, so I would take caution.

Then, how to avoid confusion?

  1. Obviously, you can use a different mark. But this option is not always possible.
  2. You can use a different spelling.
  3. You can add more wording, preferably in the beginning.
  4. You can introduce design elements to the mark and register it as a “special form” mark.
  5. It’s better to do more than one of the above 2–5.

Let me elaborate.

Let’s say you want to have the wording “Philosophy” in your skincare brand. Do a short TESS or internet search and you will find Philosophy is an established beauty brand.

  1. Different mark. Let’s say you’re already committed to the wording “Philosophy.”
  2. Different spelling. Well, how do you feel about “Freelosophy” or “Feelosophy”? In fact, someone already tried Feelosophy, which was rejected. However, Freelosophy was okay as to the similarity so far.
  3. Additional wording. “Body Philosophy” and “Jean & Len Philosophy” are independently registered marks. I need to warn you that adding insubstantial wording or something at the end might not do the job. For example, “The Philosophy” is sure to be rejected, so is “Philosophy: Origin”.
  4. Design elements. This one is tricky and only works when the prior marks are also special form marks. For standard character marks, it still may work like a charm when you combine it with the above. In our example, Philosophy is a “standard character” mark that claims all stylistic variations of the wording Philosophy. Therefore, just adding fonts, colors, or images, will not be enough. However, Freelosophy took an extra step to include design elements as shown below.
Mark Image

You should note that the above special form mark was determined by the USPTO to be dissimilar to Philosophy. On the other hand, a standard character mark “Feelosophy” was.

I hope this article gives you some hints as to how to avoid trademark office action based on the refusal ground of “likelihood of confusion” Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.

There are many other refusal grounds, which should be addressed in separate articles.

You can stay tuned for more articles by

By Youngsik Jeon, Esq.

J.D. Chicago-Kent College of Law; Georgia & Illinois Bar Member; USPTO Registered Patent Attorney

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