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Why The USPTO Might Deny An Application For A Trademark

Trademarks protect some of your business’s most valuable assets, yet the United States Patent and Trademark Office (USPTO) can deny an application for many reasons.

In addition to basic information such as your name, contact information and filing fee, your application must include:

• A summary of your business’s goods and services
• A description of your basis for filing
• An image of the mark you want to trademark

USPTO could deny your application due to errors involving any application requirements but many denials are due to the drawing of the mark or the mark itself for which you are seeking a trademark.

Choosing the right type of drawing for your application

The image of your mark, called the drawing, may be submitted as a “standard character drawing” or a “special form drawing.” A standard character drawing consists solely of words, letters and/or numbers but may not include any design elements. A standard character drawing does not limit your mark to a specific font, size or color.

A special form drawing includes a logo and/or wording with a specific font, color or other design elements. The image that you submit must include the wording and design elements as one image. Unless color is one of the image’s design elements, you should submit your image in black and white. USPTO can deny your application if you submit a drawing that does not meet the requirements of the type of drawing you choose to provide.

If you have variations of the mark, you must submit a separate application for each one.

Marks that may be rejected

Not all denials are due to technical errors. Some denials are based on the details of the mark you are trying to protect.

To avoid a denial based on the mark itself, you must scrutinize the drawing carefully. You must avoid wording or images that may be confusing when spoken or viewed visually. Your mark should not be similar to the mark of any other business.

Marks should use precise wording. Everyday words or phrases may be too difficult to protect and could contribute to the denial of an application.

USPTO may also deny an application for a trademark if your mark:

• Uses a surname
• Describes the origin of the product
• Is offensive
• Incorporates the title of a book or movie

Selecting a strong mark and properly submitting a drawing of that mark are two important ways to reduce the chances that USPTO will reject your application. However, it may be worth exploring what additional steps you can take to help ensure your business’s intellectual property receives the protection it deserves.

Understanding how this affects the small business economy is part of our job here at Santomassimo Davis LLP, as we primarily focus in providing expert Outside General Counsel for a variety of law firms and legal issues related to Intellectual Property  in New Jersey, New York and Pennsylvania.

Thanks for reading our latest blog talking about topical legal issues facing small businesses. Learn more from our Outside General Counsel Blogs.

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