What to Do If Your Trademark Application Is Rejected
Written by JLG - April 17, 2025
Receiving a rejection letter from the United States Patent and Trademark Office (USPTO) after submitting your trademark application can be frustrating and discouraging. But a rejection is not the end of the road. Understanding why your trademark application was rejected and knowing how to respond effectively can help you turn things around.
Why Was Your Trademark Application Rejected?
Before you can take action, you need to understand the reason for the rejection. The USPTO may issue a refusal for several reasons, known as “Office Actions.” These can be divided into two main categories:
1. Substantive Refusals
These are refusals based on the legal strength of your trademark. Common reasons include:
- Likelihood of Confusion: Your trademark is too similar to an existing registered mark, creating a risk of consumer confusion.
- Descriptive or Generic Terms: Your mark is considered too descriptive of your product or service, making it ineligible for protection.
- Deceptively Misdescriptive: Your mark falsely describes a quality or characteristic of the goods or services.
- Geographically Descriptive: Your mark describes the geographic origin of your goods or services.
2. Procedural or Technical Refusals
These are refusals related to errors in your application. Common issues include:
- Incorrect classification of goods or services.
- Vague or overly broad descriptions.
- Improper specimen (proof of use in commerce).
- Incorrect owner information.
Step-by-Step: How to Respond to a Trademark Rejection
If your application has been rejected, here are the steps you should take:
1. Carefully Review the Office Action
Read the USPTO’s Office Action letter thoroughly. Identify the specific reasons for the refusal and whether it is a non-final Office Action (you have a chance to respond) or a final Office Action (the USPTO has made a final decision).
2. Determine the Response Deadline
Most Office Actions have a response deadline of six months from the date of issuance. Missing this deadline can result in your application being abandoned.
3. Evaluate Your Options
Depending on the reason for the rejection, you may have several options:
- Amend Your Application: Correct any technical issues, such as classification errors, unclear descriptions, or improper specimens.
- Provide Additional Evidence: For descriptive marks, you may be able to show that your mark has acquired “secondary meaning” — that consumers associate the mark specifically with your brand.
- Argue Against the Refusal: Prepare a legal argument explaining why your mark should be allowed, citing USPTO rules or case law to support your position.
- File an Appeal: If you disagree with a final refusal, you can appeal to the USPTO’s Trademark Trial and Appeal Board (TTAB).
4. Prepare a Clear and Persuasive Response
Your response must directly address the USPTO’s concerns. This may involve:
- Providing a detailed explanation of why your mark is not likely to cause confusion.
- Offering evidence that your mark has acquired distinctiveness in the marketplace.
- Correcting any technical errors identified by the USPTO.
5. Consider Modifying Your Trademark
If the rejection is due to a likelihood of confusion with another mark, you may be able to modify your mark to overcome the refusal. This could involve:
- Slightly changing the wording, design, or logo of your mark.
- Narrowing the scope of goods or services you are seeking protection for.
6. Seek Legal Guidance
If you are unsure how to respond to the Office Action or if your application has been issued a final refusal, consulting with a trademark attorney can help. An experienced attorney can help you develop a strong legal argument, prepare your response, and increase your chances of success.
What Not to Do When Your Trademark Is Rejected
- Do Not Ignore the Office Action: If you fail to respond within the deadline, your application will be abandoned.
- Do Not Submit an Incomplete Response: Make sure you address every issue mentioned in the Office Action. Partial responses will not be accepted.
- Do Not Get Defensive: Keep your response factual, clear, and professional. Arguing emotionally or disrespectfully with the USPTO examiner will not help your case.
Can You Reapply If Your Trademark Is Rejected?
Yes. If your application is ultimately refused, you can reapply. However, if the original problem is not addressed, the new application will likely be rejected again. This is why it is important to understand the reason for rejection and develop a better strategy.
How Jafari Law Group Can Help
Trademark rejections can be complex, but you do not have to navigate them alone. At Jafari Law Group, we help businesses respond to Office Actions, overcome rejections, and secure the trademark protection they need.
- We carefully review your Office Action and explain your options.
- We prepare clear, persuasive responses tailored to your situation.
- We guide you through the appeal process if necessary.
If your trademark application has been rejected, contact us for a free consultation. Let us help you protect your brand.