The four most common grounds for refusal of a trademark application include the likelihood of confusion, a mark that is merely descriptive or deceptively misdescriptive, and use of surnames. Each of these grounds can cause significant headache by forcing you to spend time and money defending the mark with the USPTO, with the possibility of losing and having to start over. This expense is avoidable if a few tips are considered.
First, run a search on the USPTO website (see link below) with your proposed mark, including all variations of the name. Also consider the class of any similar mark to confirm whether an existing mark sells similar products or engages in related activity. If there is similarity in name and product type, you should consider a new mark.
In addition, make sure your proposed trademark does not contain words or terms that are merely descriptive (i.e., WORLD’S SOFTEST COOKIES) or deceptively misdescriptive (i.e., FRESHLY ROASTED COFFEE) or include a surname unless the surname is associated with the project as an established brand. It is also important that no scandalous, disparaging or immoral terms be considered, as these marks will likely be rejected.
To search directly with the USPTO, consider the following link:
Jennifer T. Poochigian is an attorney with Coleman & Horowitt, LLP. She represents clients in a wide variety of litigation matters including complex commercial, intellectual property, unfair competition, real estate, banking and construction litigation, landlord-tenant matters, and commercial collections. She also serves as appellate counsel. She is a graduate of California State University, Fresno and received her law degree from Santa Clara University School of Law. She is a member of the California Bar Association, Fresno County Bar Association, Armenian Lawyers Association, and Association of Business Trial Lawyers. She can be reached at (559)248-4820 / (800) 891-8362 or firstname.lastname@example.org.
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