The United States Patent and Trademark Office (USPTO) can reject a trademark application for various reasons. The mark may be like others on the market, or the application was incomplete. Whatever the reason, it does not necessarily mean an end to getting your trademark. Can you use a rejected trademark? That answer will depend on several factors. Reach out to the experienced and dedicated intellectual property attorneys at Polymath Legal PC to get the answers to your trademark questions. Schedule a consultation by calling (833) 931-6418.
What Happens when a Trademark Is Rejected?
After submitting an application to the United States Patent and Trademark Office, applicants wait for an approval or rejection letter. A trademark examining attorney thoroughly reviews all the documentation and samples, issuing a decision for the application. Unfortunately, rejections are common. Any applicant who has their trademark rejected can file for reconsideration. However, an applicant can also file an appeal with the Trademark Trial and Appeal Board (TTAB). Trademark applicants only have six months to appeal the decision by the USPTO, according to 15 U.S.C. 1070. Otherwise, that applicant could lose their right to request another review of their trademark application.
After making an appeal to the TTAB, a three-member board reviews the documentation, including the interaction between the applicant and the examining attorney. The committee decides on whether to approve or deny the appeal. With an official denial, the applicant can file another appeal within a one-month time frame for a reconsideration request. The board must decide whether to approve or deny this final request. After this point, the applicant can file an appeal with the United States Court of Appeals for the Federal Circuit. After the second review, the USPTO considers the application dead with an official denial.
Reasons for Trademark Rejection from the USPTO
Several reasons can lead to a rejected trademark application from the USPTO. They include:
- Too Generic: The trademark uses a common phrase or word.
- Causes confusion: The mark is similar to other registered trademarks, which could confuse consumers.
- Merely Descriptive: Trademarks are not approvable for words that simply describe a product.
- Uses a Surname: A trademark cannot include a person’s surname.
The USPTO does not outright reject a trademark. In many situations, the USPTO issues an Office Action that outlines problems with the application. Often, an Office Action lists the issues and gives the applicant a deadline to address them. Without resolving the problems, then a rejection letter could come from the examining attorney. After all the appeals, the trademark applicant may decide to use the rejected mark, but that could lead to legal issues. Rejected trademark users run the risk of trademark infringement. Speak with the California intellectual property attorneys at Polymath Legal PC to discuss whether you can use a rejected trademark.
Can You Use a Trademark That Has Been Canceled?
Using a canceled trademark can be challenging, especially if the individual does not know why the USPTO canceled the mark in the first place. Before using a canceled trademark, the person must understand the USPTO’s reasons behind the initial cancellation. Sometimes, the first owner may have failed to renew the registration. On the other hand, another individual or company could have petitioned for a cancellation of the mark because of the similarity to their trademark on the market. Many canceled trademarks may have hidden reasons behind the cancellation. Registering or using these trademarks usually opens new applicants to various problems.
Can You Infringe on a Dead Trademark?
Dead trademarks are not considered “active” by the USPTO. At one point, the USPTO registered these marks, but the trademark holder did not keep them active. The USPTO considers these trademarks abandoned, but that does not mean they are “up for grabs.” The initial owner of the mark could still use their trademark. Along with that, common law rights could apply to them in certain regional areas.
While cease and desist letters may be issued, there are fewer legal protections than with an active trademark. Many owners abandoned these trademark applications for various reasons. If the initial application was denied because of similarities or confusion with another mark, using an abandoned or dead one will only bring the same problems. Dead trademarks are not barred from registration, but users will need to proceed with caution.
Avoiding Trademark Rejections
Many people wonder, “Can you use a rejected trademark?” The answer is usually yes. But you will want to minimize the chance of rejection by understanding the filing steps for your application. If the mark is too general or descriptive, then it could be rejected by the USPTO. Filter out words that cannot correctly distinguish your mark from others on the market. Words and descriptive phrases must conform to the USPTO trademark standards so not to overlap with similarly registered marks.
Many goods and services in a use-based application have not been used. While listing services and goods in an Intent-to-Use application is acceptable, use-based ones must show proof of use before the USPTO’s deadlines. A simple search of the USPTO trademark database can also prevent a rejection of a trademark application. Remember that some trademarks are not always listed in the same class. The applicant must search for similar trademarks on the market to avoid a rejection.
Contact a Dedicated California Intellectual Property Attorney Today
Applicants with a trademark rejection might feel like they have no other options. There are a few circumstances where the applicant can appeal the decision, hoping for a different result. Without an approved application by the USPTO, the client could face trademark infringement if they decide to use a mark without the proper approval.
Can you use a rejected trademark? Yes, but there are a few points to consider. It is always best to go back and address the problems outlined by the examining attorney. The initial situation can be fixed in many cases, leading to trademark approval. You can address all trademark questions by calling the California IP attorneys at Polymath Legal PC. Schedule a consultation by calling (833) 931-6418 to discuss your next legal steps after a trademark rejection.