Grounds For USPTO Trademark Refusal

(TMEP §818 FROM USPTO MANUAL)

(also covered in 15 USC 1051, 15 USC 1052, 15 USC 1053, 15 USC 1127)


The following are substantive grounds for refusal. Registration may be refused on the ground that:

(1) the applicant is not the owner of the mark (15 U.S.C. §1051; TMEP §1201);

(2) the subject matter for which registration is sought does not function as a mark (15 USC 1051, 15 USC 1052, 15 USC 1053, 15 USC 1127) because, for example, the proposed mark:

(a) is used solely as a trade name (TMEP §1202.01);

(b) is functional, i.e., consists of a utilitarian design feature of the goods or their packaging (15 U.S.C. §1052(e)(5); TMEP §§1202.02(a) et seq.);

(c) is a nondistinctive configuration of the goods or their packaging (TMEP §§1202.02(b) et seq.);

(d) is mere ornamentation (TMEP §§1202.03 et seq.);

(e) is the generic name for the goods or services (TMEP §§1209.01(c) et seq.); or

(f) is the title of a single creative work or the name of an author or performing artist (TMEP §§1202.08 and 1202.09 et seq.);

(3) the proposed mark comprises immoral or scandalous matter (15 USC 1052(a); TMEP §1203.01);

(4) the proposed mark is deceptive (15 USC 1052(a); TMEP §§1203.02 et seq.);

(5) the proposed mark comprises matter that may disparage or falsely suggest a connection with persons, institutions, beliefs, or national symbols, or bring them into contempt or disrepute (15 USC 1052(a); TMEP §§1203.03 et seq.);

(6) the proposed mark comprises the flag, coat of arms or other insignia of the United States or any State, municipality, or foreign nation (15 USC 1052(b); TMEP §1204);

(7) the applicant’s use of the mark is or would be unlawful because it is prohibited by statute (TMEP §§1205 et seq.);

(8) the proposed mark comprises a name, portrait or signature identifying a particular living individual without the individual’s written consent, or the name, portrait or signature of a deceased president of the United States during his widow’s life, without written consent of the widow (15 USC 1052(c); TMEP §§1206 et seq.);

(9) the proposed mark so resembles a previously registered mark as to be likely, when used with the applicant’s goods and/or services, to cause confusion or mistake, or to deceive (15 USC 1052(d); TMEP §§1207 et seq.);

(10) the proposed mark is merely descriptive or deceptively misdescriptive of the applicant’s goods and/or services (15 USC 1052(e)(1); TMEP §§1209 et seq.);

(11) the proposed mark is primarily geographically descriptive of the applicant’s goods and/or services (15 USC 1052(e)(2); TMEP §1210.01(a));

(12) the proposed mark is primarily geographically deceptively misdescriptive of the applicant’s goods and/or services (15 USC 1052(e)(3); TMEP §1210.01(b)); or

(13) the proposed mark is primarily merely a surname (15 USC 1052(e)(4); TMEP §§1211 et seq.).


USPTO Trademark Manual of Examining Procedure (TMEP) §818 http://tess2.uspto.gov/tmdb/tmep/0800.htm#_T818


For information on Grounds for Opposition and Cancellation of Trademarks, see Merely-Descriptive.com. For more information on how a proposed mark must function, see Function As A Mark.



GROUNDS FOR REFUSAL: IF YOU HAVE RECEIVED A REFUSAL FOR ONE OF THE ABOVE REASONS OR OTHERS--CALL US.

Overcoming refusals often takes a combination of steps, done correctly. Replying to Office Actions correctly is a good investment for a business. A trademark may be one of the most valuable pieces of Intellectual Property that a business can have, and what legal rights come out of the application & registration are crucial to using that trademark to its fullest potential. Trademark rights originate from common law rights and understanding the legal terms that are defined in case law and how they are used in the federal statutes involved is essential. See What to Expect from a Not Just Patents Trademark Registration.  

A federally registered trademark has many more rights than an unregistered mark, a delay of several months or years in obtaining that registration may be detrimental to your business. A mark that does not meet federal registration standards may also have difficulty proving common law rights since the principles are based on the same concepts. See Inherently-Distinctive.com for more information. For instance, the same federal registration standards for geographic marks apply to common law marks. For more information on geographic terms see http://merely-descriptive.com/geographictrademark.html.  Whether or not a trademark receives federal registration depends on how the application is crafted AND the mark. For instance, a bad specimen that does not show the mark being used in a valid manner may be the cause of a trade name refusal, a merely descriptive refusal or a mere ornamentation refusal. A Not Just Patents Trademark Attorney can help you sort through potential specimens and find a good example and recommend changes for future use to assure that rights are protected.


Even if a trademark owner receives a registered trademark, the mark can be challenged if the trademark owner did not do a thorough trademark search and clearance to assure that there were no prior users. The USPTO only examines a trademark application against other FEDERAL registrations for the RIGHT TO REGISTER, they do not determine if an applicant has the RIGHT TO USE the mark. The Lanham Act provides that a registered mark, even if it has become incontestable, still may be challenged "to the extent, if any, to which the use of a mark registered on the principal register infringes a valid right acquired under the law of any State or Territory by use of a mark or trade name continuing from a date prior to the date of registration under this chapter of such registered mark." 15 U.S.C. 1065 as quoted in Advance Stores Co. Inc. v. Refinishing Spec. Inc., 188 F.3d at 411 (6th Cir., 1999).


Not Just Patents ® Legal Services do not just involve a brief federal trademark search looking for similar names that are already registered and filling out the form for a federal trademark application. See What to Expect from a Not Just Patents Trademark Search. The goals of our Trademark Services are to comply with federal registration requirements, give your trademark the maximum rights under the law   AND avoid infringing other registered and unregistered trademarks to protect your mark in an economical manner.  Rushing to file an application without knowing if it is being done to maximize benefits may result in rights that are weak or even worse, an abandonment, because the application contained fatal flaws.


Not Just Patents ® Legal Services provide a broad range of services for Intellectual Property Protection. Call us with questions at (651) 500-7590. Don’t assume that protecting your legal rights is too expensive if you haven’t even called to see what it would cost. See Why Should I Have A Trademark Attorney Answer My Office Action if you have already applied and been refused. In today’s economy (and for the future), Intellectual Property may be one of the best ways to invest in your business.

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For more information from Not Just Patents, see our other sites:      

Steps to a Patent    How to Patent An Invention

Filing Requirements for Patent Applications

Trademark e Search    Strong Trademark     Enforcing Trade Names

Common Law Trademarks  Trademark Goodwill  Abandoned Trademarks

Should I Get A Trademark or Patent?

Patentability Evaluation

Trademark Disclaimers   Trademark Dilution     Oppose or Cancel?

Examples of Disclaimers  Business Name Cease and Desist

Sample Patent, Trademark & Copyright Inventory Forms

Verify a Trademark  Be First To File   How to Trademark Search

37 CFR § 1.53 Application number, filing date, and completion of application

Using Slogans (Taglines), Model Numbers as Trademarks

Which format? When Should I  Use Standard Characters?

Difference between Provisional and Nonprovisional Patent Application

Opposition Pleadings    UDRP Elements    Loss of Trademark Rights

How To Answer A Trademark Cease and Desist Letter

Shop Rights  What is a Small or Micro Entity?

Trademark Refusals    Does not Function as a Mark Refusals

Converting Provisional to Nonprovisional Patent Application (or claiming benefit of)

Acceptable Specimen       Supplemental Register  $199 Statement of Use

How To Show Acquired Distinctiveness Under 2(f)

Patent Pending see also Patent Marking

Trademark Attorney for Overcoming Office Actions

Functional Trademarks   How to Trademark     Surname Refusal

Patent Drawings

Grounds for Opposition & Cancellation     Cease and Desist Letter


Valid/Invalid Use of Trademarks     Trademark Searching

How to Respond to Office Actions

What is a Compact Patent Prosecution?


Examples and General Rules for Likelihood of Confusion

USPTO Search Method for Likelihood of Confusion

Examples of Refusals for Likelihood of Confusion  DuPont Factors

Patent search-New invention

Color as Trade Dress  3D Marks as Trade Dress

Patent Search-Non-Obvious

Ornamental Refusal  Standard TTAB Protective Order

How to Keep A Trade Secret

Descriptive Trademarks Trademark2e.com  Likelihood of Confusion 2d

State & Federal Trade Secret Laws

Merely Descriptive Trademarks   Merely Descriptive Refusals

Chart of Patent vs. Trade Secret

Register a Trademark-Step by Step   Trademark Fixer

ID of Goods and Services see also Headings (list) of International Trademark Classes

Likelihood of confusion-Circuit Court tests

Pseudo Marks    How to Reply to Cease and Desist Letter

Geographically Descriptive or Deceptive

Overcome Merely Descriptive Refusal   Overcome Likelihood Confusion

What Does ‘Use in Commerce’ Mean?    SCAM Letters

Section 2(d) Refusals   ApplyToTrademark.com

Trademark Incontestability  TTAB Manual (TBMP)

Typical Brand Name Refusals  What is a Family of Marks?

TTAB/TBMP Discovery Conferences & Stipulations

TBMP 113 Service of TTAB Documents  TBMP 309 Standing

Trademark Steps Trademark Registration Answers TESS  

Trademark Searching Using TESS  Trademark Search Tips

TSDR Trademark Status and Document Retrieval

What are Dead or Abandoned Trademarks? Can I Use An Abandoned Trademark?  Can I Abandon a Trademark During An Opposition?

Published for Opposition see also Opposition Steps/Cancellation Steps

Counterclaims and Affirmative Defenses

Differences between TEAS and TEAS plus  

How do I Know If Someone Has Filed for An Extension of Time to Oppose?

Protecting Trademark Rights (Common Law)

Steps in a Trademark Opposition Process

Zombie Trademark  

What Does Published for Opposition Mean?

What is the Difference between Principal & Supplemental Register? What If Someone Files An Opposition Against My Trademark?

Acquired Distinctiveness  2(f) or 2(f) in part

How to Respond Office Actions  DIY Overcoming Descriptive Refusals

Extension of Time to Oppose

Trademark Clearance Search   DIY Trademark Strategies


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