How to Avoid Trademark Rejection

While you might have spent months thinking of a name for your brand, website, or product, it might be too late to realize that registering trademarks have limitations too. Limitations that people don’t consider when they try to come up with a unique name for their venture or property. You can’t obtain a federally registered trademark if your name has three things in it.

1. It has scandalous content in it that is demeaning to something or someone. 
2. It has immoral content in it.
3. It has a disparaging matter in it. 

Simple enough, but the rejection will come your way without you even realizing what went wrong. It, therefore, becomes imperative that you save yourself from the embarrassment of a rejected trademark and learn to protect your intellectual property. Even if it is a unique idea, not having a trademark registered means that anyone can benefit from it. 

Examples of Rejected Trademarks

There are plenty of examples in the market of rejected trademarks by the United States Patent and Trademark Office (USPTO). The best way to protect your intellectual property is to understand why these examples got rejected in the first place. This way, you won’t repeat the same mistakes and can easily carry on with your business. 

The first example we have is of the Chinatown band named “The Slants,” who had their registration application rejected for a trademark for their name. 

Why? Because the USPTO declared their case fell under the “immoral, deceptive and scandalous content” category because the word “Slant” was a derogatory term towards the Asian community. This is ironic because the band themselves were Asian, and they used the word for a kind of irony to promote themselves.

Another example is the Redskins Football team which lost its appeal to keep its trademark registration for its name.

Why? For the same reason as The Slants, it was considered derogatory and offensive to the Native American community. However, the USPTO has changed its decision, in this case, several times.

And finally, we have the example of the company “cleverly named,” which had their trademark application for their name rejected.

Why? The examiner who reviewed the application found the name was too generic and descriptive to be registered as a trademark.

In all of these examples, you can see that three key things will get your trademark application rejected- scandalous, immoral, and disparaging content.

The question now arises: What ends up determining that a particular name falls under “disparaging, immoral and scandalous”?

What Constitutes a Rejection Case?

Anything that constitutes as “disparaging, immoral, and scandalous” is taken into account by the USPTO. It is also taken into account in cases where a mark negatively affects institutions or belief systems, leading to a negative outcome.

Other things that constitute a rejection include cases where Marijuana-related products are mentioned even if there is a proper category in the industry for medical marijuana. While these cases may make you feel that the USPTO has a brutal stance towards such cases, they also seem hypocritical in certain situations like the “Redskins” case. The USPTO has gone back and forth on their decision for this case so many times.

While the name may have been derogatory to a specific community, the name was still allowed to register. Despite several Native American protests being carried out, the name has yet to receive a fair trial. One might say the USPTO is flexible in their approach, but this makes you feel like they are hypocritical.

After the Rejection

If you are someone who the USPTO has freshly rejected, you can take your chances at trying to send an appeal. You can still carry out business as usual which means you can use the name for commercial purposes; however, their name becomes vulnerable to being copied until it is registered and protected by federal law. Try your best to defend your case and argue how it comes out to the community by taking a survey. 

You can even present the results as evidence to support your case if it helps. Legal protection for your intellectual property is super important in the digital age, and finding enough evidence to make sure you win is crucial. Think of creative ways you can try to win against the USPTO’s case, and if not, you can rest assured that you did your best. Out of all the appeals, only about 25% are approved, owing to the USPTO’s rigorous standards.

Why Should You Consider Registration?

When you understand these limitations, it is important to consider registration. There are many benefits to trademark registration, and it is one of the best ways to protect your intellectual property. The most important reason you should consider trademark registration is because it gives you nationwide protection. This means that no one can use your mark without your permission, and even if they do, you have the right to take legal action against them.

Once you register your trademark, it lasts for ten years, after which it needs to be renewed so long as you can show that your mark is still being used in commerce. Although there are some limitations on this, – if your trademark isn’t being used after a certain amount of time, you are unable to fulfill the requirements for renewal.

Summary

When the USPTO rejects you, it is essential to consider all your options. You can try to send in an appeal or continue using the name for commercial purposes; however, their name becomes vulnerable to being copied until it is registered and protected by federal law. Make sure to defend your case and argue how it comes out towards the community. If not, you can rest assured that you did your best.

If you have been rejected by the USPTO or your application has been issued an Office action, don’t worry – we are here to help. Our trademark consultation service can help you build a strong case and give you the best chance of winning.