Common Refusals
Examination refusals cluster into a short list. If you can name which one you received, you can usually predict what the examiner needs to see before withdrawing it.
The short list
Most Office Actions turn on one of a handful of provisions in the Lanham Act. Two dominate: likelihood of confusion with an existing registration under Section 2(d), and the family of descriptiveness problems under Section 2(e). The pattern is the same in every case, though. The examiner identifies a provision, applies its test, and tells you what would satisfy it.
| Refusal | Authority | Usual fix |
|---|---|---|
| Likelihood of confusion | Section 2(d) | Argue differences in the marks and the goods, narrow the identification, get a consent agreement, or delete the conflicting goods. |
| Mere descriptiveness | Section 2(e)(1) | Argue the mark is suggestive, claim acquired distinctiveness under Section 2(f), or move to the Supplemental Register. |
| Primarily merely a surname | Section 2(e)(4) | Show the term has a non-surname meaning that is primary to buyers, or claim acquired distinctiveness. |
| Geographic descriptiveness | Section 2(e)(2) | Argue the place is remote or obscure, disclaim it, or claim acquired distinctiveness. |
| Genericness | No statute; bars both registers | Nothing cures it. Redesign the branding or keep the term free for everyone. |
| Functionality | Trade dress doctrine | Nothing cures it. Argue the feature is ornamental, or change the design. |
| Improper specimen | Section 1 and Section 45 | Submit a specimen showing the mark used as a source identifier on or in connection with the goods or services in commerce. |
| Indefinite identification | Section 45 identification requirements | Amend using pre-approved wording from the ID Manual. |
| Failure to disclaim | Section 6(a) | Enter the standard disclaimer wording for the descriptive component. |
Specimen and use problems
If you filed under Section 1(a) on actual use, the specimen has to show the mark in real commerce for every class you claimed. A mockup, an internal document, a purely informational website, or a logo used only as decoration on the front of a shirt will all draw a refusal. The fix is almost always a better specimen rather than a better argument.
- For goods: a photo or screenshot of the tag, label, packaging, or product showing the mark, or a web page showing the mark next to the goods with a way to order them.
- For services: an advertisement, brochure, signage, or web page that shows the mark and identifies the services rendered under it.
- Ornamental use: if the mark is only decoration on the goods, the examiner will say it does not identify source. Add wording or packaging that makes the mark read as a brand.
- Wrong mark: the specimen must show the same mark as the drawing. A materially different version is treated as a different mark.
Other provisions that show up
- Section 2(a) false connection or deceptive matter, including wording that falsely suggests a link to a person, institution, or place.
- Section 2(a) scandalous or immoral matter, which is rare and judged against current public sentiment.
- Section 2(b) flags, coats of arms, and official insignia of the United States, a state, or a foreign nation.
- Section 2(c) the name, portrait, or signature of a living individual without written consent, or of a deceased president during the widow's lifetime without consent.
- No bona fide intention to use the mark in commerce in a Section 1(b) application, or an entity type and owner name that do not match.
Refusals, requirements, and informalities
Not everything in the letter is a refusal. A requirement, such as a disclaimer or an amended identification, is something you must do but that does not attack the mark itself. An informality is a clerical defect. You must clear all three categories in one response, because the examiner will not approve the application while any of them remain open.
A response that addresses only some of the issues leaves the rest alive and moves you toward a final Office Action, which narrows your options and costs more to resolve. Government fees already paid are not refunded at any point in this process.
Frequently asked questions
What is the most common reason a trademark application is refused?
Likelihood of confusion under Section 2(d), where the examiner finds your mark too close to an existing registration for related goods or services. Mere descriptiveness under Section 2(e)(1) is the other very frequent one.
Can I fix a bad specimen after filing?
Yes, in most cases. You can submit a substitute specimen showing the mark actually used in commerce for the goods or services in the class, as long as the mark was in use before the relevant filing date.
Is a requirement the same as a refusal?
No. A refusal says the mark cannot be registered as filed. A requirement, such as a disclaimer or a tighter identification, says something must be added or corrected. Both must be satisfied before approval.
Do refusals mean the USPTO made a mistake?
Rarely. The examining attorney selects the citations and applies the statute, and errors are uncommon. Read the citation and the evidence before assuming the examiner misread your application.
More in Office Actions & Refusals
Likelihood of Confusion
Why your mark was compared to another registration, and how examiners weigh it.
Descriptive, Geographic & Surname Refusals
Three distinct refusal types that get confused with each other.
Understanding Office Actions
What an Office Action is, and the deadlines it puts you on.
Genericness & Functionality Refusals
Why some marks can never be registered, no matter how you argue it.