I stumbled onto a USPTO page earlier that warns applicants that if they file a trademark, it “may” be rejected:
The USPTO may refuse to register your mark on numerous grounds. The most common are:
Likelihood of Confusion
The USPTO conducts a search for conflicting marks as part of the official examination of an application only after a trademark application is filed. In evaluating an application, the examining attorney conducts a search of USPTO records to determine whether there is a conflict between the mark in the application and a mark that is either registered or pending in the USPTO. The principal factors considered in reaching this decision are the similarity of the marks and the commercial relationship between the goods and services identified by the marks. To find a conflict, the marks do not have to be identical or the goods and services the same; instead, it is sufficient if the marks are similar and the goods and or services related. Similarity in sound, appearance, or meaning may be sufficient to support a finding of likelihood of confusion.
When a conflict exists between the applicant’s mark and a registered mark, the examining attorney will refuse registration of the applicant’s mark on the ground of likelihood of confusion. If a conflict exists between the applicant’s mark and a mark in an earlier-filed pending application, the examining attorney will notify the applicant of the potential conflict. The applicant’s mark will be refused on the ground of likelihood of confusion only if the earlier-filed application becomes registered.
Merely Descriptive and Deceptively Misdescriptive
The examining attorney will refuse registration of a mark as merely descriptive if it immediately describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services. A mark will be refused as deceptively misdescriptive if (1) the mark misdescribes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services; and (2) the misrepresentation conveyed by the mark is plausible.
Primarily Geographically Descriptive and Primarily Geographically Deceptively Misdescriptive
The examining attorney will refuse registration of a mark as primarily geographically descriptive if: (1) the primary significance of the mark is geographic; (2) purchasers would be likely to think that the goods or services originate in the geographic place identified in the mark, i.e., purchasers would make a goods/place or services/place association; and (3) the mark identifies the geographic origin of the goods or services.
A mark will be refused as primarily geographically deceptively misdescriptive if: (1) the primary significance of the mark is geographic; (2) purchasers would be likely to think that the goods or services originate in the geographic place identified in the mark, i.e., purchasers would make a goods/place or services/place association; and (3) the goods or services do not originate in the place identified in the mark.
Primarily Merely a Surname
The examining attorney will refuse registration of a mark if the primary significance to the purchasing public is a surname.
Ornamentation
In general, the examining attorney will refuse registration if the applied-for mark is merely a decorative feature or part of the “dress” of the goods. Such matter is merely ornamentation and does not serve the trademark function of identifying and distinguishing the applicant’s goods from those of others.
NOTE: For a complete list of the substantive grounds of refusal and a detailed explanation of each, see Chapter 1200, Trademark Manual of Examining Procedure (TMEP). The USPTO cannot provide preliminary legal advice as to whether we will register a particular mark; filing an application is the only way to obtain a decision on whether the USPTO will refuse registration.
Anyone know if LegalZoom or any of the other “we can help you file your own trademark application” web sites provide warnings like this to applicants? Many of those sites do not provide “legal services” and once a trademark application is filed, the applicant is on their own for finding a patent/trademark attorney to help them prepare and file any subsequent Response to the Office Actions.
The Patent and Trademark Office does, at least, provide a page with details regarding “How to Respond” to a Trademark Office Action issued by an Examining Attorney, but the reality is that the rejections listed above typically require a thorough understanding of trademark law (and the appropriate legal arguments to make) to prepare and file an appropriate response.
Related The Invent Blog posts: Trademark FAQ, Idaho Trademark Databases Now On-line.
