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Grounds for Trademark Refusal TMEP 800 [Trademark] Application Requirements TMEP 818 [Trademark] Application Checklist This section may be used to determine whether materials submitted as a trademark or service mark application are complete, and to ensure that appropriate requirements and refusals are made. See 37 C.F.R. §2.21 and TMEP §202 regarding the elements that must be received before the USPTO will grant a filing date to an application. An application for trademark or service mark registration must include the following: (1) a clear drawing of the mark (37 C.F.R. §§2.21(a)(3), 2.51–2.54; TMEP §§202.01, 807–807.18); (2) a verified statement signed by a person properly authorized to sign on behalf of the applicant (15 U.S.C. §1051(a)(3), (b)(3); 37 C.F.R. §2.33; TMEP §§804–804.05); (3) a written application that includes the following: (a) the date on which the application was signed (37 C.F.R. §2.32(a)(2); TMEP §804.03); (b) the applicant’s name, and DBA designation if appropriate (37 C.F.R. §2.32(a)(2); TMEP §§803.02–803.02(c)); (c) the applicant’s legal entity (TMEP §§803.03–803.03(k)); (d) the country of which the applicant is a citizen, or the state or country of incorporation or organization of a juristic applicant (15 U.S.C. §1051(a)(2), (b)(2); 37 C.F.R. §2.32(a)(3)(i)- (e) if the applicant is a domestic partnership or domestic joint venture, the names and citizenship (or state or country of incorporation or organization) of the general partners or active members of the joint venture (37 C.F.R. §2.32(a)(3)(iii), (iv); TMEP §§803.03(b), 803.04); (f) the applicant’s domicile and post office address (15 U.S.C. §1051(a)(2), (b)(2); 37 C.F.R. §2.32(a)(4); TMEP §803.05); (g) a statement that the applicant is using the mark in commerce in a §1(a) application, or has a bona fide intent to use the mark in commerce in an application under §1(b) or §44 (15 U.S.C. §1051(a)(3)(C), (b)(3)(B), 1126(d)(2), (e); 37 C.F.R. §2.33(b)(1), (b)(2) ); (h) an identification of the goods/services (15 U.S.C. §1051(a)(2), (b)(2); 37 C.F.R. §2.32(a)(6); TMEP §§1402–1402.15); (i) the class(es) of the goods/services, if known to the applicant (37 C.F.R. §2.32(a)(7); TMEP §§1401–1401.14); (j) the dates when the mark was first used and first used in commerce with the goods/services in each class, in an application under §1(a) (15 U.S.C. §1051(a)(2); 37 C.F.R. §2.34(a)(1)(ii), (iii); TMEP §§903–903.08); (k) if the applicant claims priority under §44(d), a claim of the benefit of the applicant’s first- (l) a basis for filing (37 C.F.R. §§2.32(a)(5), 2.34; TMEP §§806–806.05); (m) an averment by the person making the verification that he or she believes the applicant to be the owner of the mark sought to be registered in an application under §1(a), or to be entitled to use the mark in commerce in a §1(b) or §44 application (15 U.S.C. §1051(a)(3)(A), (b)(3)(A); 37 C.F.R. §2.33(b)(1),(b)(2); TMEP §804.02); (n) an averment that the mark is in use in commerce in a §1(a) application (37 C.F.R. §§2.33(b)(1), 2.34(a)(1)(i); TMEP §901); (o) an averment that, to the best of the signatory's knowledge and belief, no other person, firm, corporation, or association has the right to use such mark in commerce either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods of the other person, to cause confusion, or to cause mistake, or to deceive (15 U.S.C. §1051(a)(3)(D), (b)(3)(D); 37 C.F.R. §2.33(b)(1), (b)(2); TMEP §804.02); (p) a description of the mark, if the mark is not in standard characters (37 C.F.R. §§2.37, 2.52(b)(5); TMEP §§808–808.03(g)); (q) if the mark includes color, a color claim naming the colors that are a feature of the mark, and a separate statement describing where the color(s) appear on the mark. (37 C.F.R. §2.52(b)(1); TMEP §§807.07(a)–807.07(a)(ii)); (r) a translation of non- (s) a statement that identifies any living individual whose name or likeness the mark comprises and indicates that his or her consent is of record, or a statement that the name or portrait does not identify a living individual, if appropriate (15 U.S.C. §1052(c); TMEP §§813.01–813.01(c)); (t) a claim of the applicant’s ownership of prior registrations of the same or similar marks, if any, if the owner(s) last listed in the USPTO’s records for such prior registration(s) differs from the owner(s) listed in the application (37 C.F.R. §2.36; TMEP §812); and (u) if the applicant seeks to register the mark in standard characters, a statement that "The mark consists of standard characters without claim to any particular font style, size, or color" (TMEP §807.03(a)); (4) a designation of a domestic representative is encouraged, if the applicant is not domiciled in the United States (15 U.S.C. §1051(e); 37 C.F.R. §2.24; TMEP §610); (5) a filing fee for each class of goods/services (15 U.S.C. §1051(a)(1), (b)(1); 37 C.F.R. §2.6(a)(1); TMEP §§810–810.02); (6) in a §44(e) application, a true copy, a photocopy, a certification, or a certified copy of the registration in the applicant’s country of origin, and a translation of the foreign registration if it is not in English (15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004.01–1004.01(b)); and (7) in a §1(a) application, one specimen for each class (15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a), 2.86(a)(3); TMEP §§904–904.07(b)). See 15 U.S.C. §§1051(a)(3)(D) and 1052(d), 37 C.F.R. §2.99, and TMEP §1207.04(d)(i) regarding requirements for applications for concurrent use registration. See 37 C.F.R. §2.44 and TMEP §§1303.01–1303.01(b)(ii) regarding the requirements for collective trademark and collective service mark applications; 37 C.F.R. §2.44 and TMEP §§1304.02–1304.02(d) regarding collective membership mark applications, and 37 C.F.R. §2.45 and TMEP §§1306.02–1306.02(d) regarding certification mark applications. 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(a)(1); TMEP §1201); (2) The subject matter for which registration is sought does not function as a mark (15 U.S.C. §§1051, 1052, 1053, 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)–1202.02(a)(viii)); (c) is a nondistinctive configuration of the goods or their packaging (TMEP §§1202.02(b)–1202.02(b)(ii)); (d) is mere ornamentation (TMEP §§1202.03–1202.03(g)); (e) is the generic name for the goods or services (TMEP §§1209.01(c)–1209.01(c)(iii)); or (f) is the title of a single creative work or the name of an author or performing artist (TMEP §§1202.08–1202.08(f), 1202.09–1202.09(b)); (3) The proposed mark comprises immoral or scandalous matter (15 U.S.C. §1052(a); TMEP §1203.01); (4) The proposed mark is deceptive (15 U.S.C. §1052(a); TMEP §§1203.02–1203.02(g)); (5) The proposed mark comprises matter that may falsely suggest a connection with persons, institutions, beliefs, or national symbols (15 U.S.C. §1052(a); TMEP §§1203.03–1203.03(c)(iii)); (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 U.S.C. §1052(b); TMEP §§1204–1204.05); (7) The applicant’s use of the mark is or would be unlawful because it is prohibited by statute (TMEP §§1205–1205.02); (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 U.S.C. §1052(c); TMEP §§1206–1206.05); (9) [Most common refusal] 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 U.S.C. §1052(d); TMEP §§1207–1207.04(g)(i)); (10) [Common refusal] The proposed mark is merely descriptive or deceptively misdescriptive of the applicant’s goods and/or services (15 U.S.C. §1052(e)(1); TMEP §§1209–1209.04); (11) The proposed mark is primarily geographically descriptive of the applicant’s goods and/or services (15 U.S.C. §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 U.S.C. §1052(e)(3); TMEP §1210.01(b)); (13) The proposed mark is primarily merely a surname (15 U.S.C. §1052(e)(4); TMEP §§1211–1211.02(b)(vii)); or (14) The proposed mark merely identifies a character in a creative work (TMEP §1202.10). An applicant may submit a claim and proof of distinctiveness of the mark or a portion of the mark, under §2(f). See 15 U.S.C. §1052(f); TMEP §§1212–1212.10. A mark that is capable of distinguishing the applicant's goods or services may be registrable on the Supplemental Register, in an application under §1 or §44 of the Trademark Act. See 15 U.S.C. §§1091–1096; TMEP §§815–815.04. The examining attorney will require a disclaimer of an unregistrable component of an otherwise registrable mark. See 15 U.S.C. §1056; TMEP §§1213–1213.11.Likelihood of confusion is the most common ground for a trademark refusal or opposition but it is not by far the only reason. Out of the following 20+ different grounds for refusal, oppositions or cancellations, likelihood of confusion under Trademark Act § 2(d), 15 U.S.C. § 1052(d) is only the first ground. |
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