Reviewed by Thomas Phung, Esq., trademark attorney · Part of our Office actions & rejections guide
Short answer: The two most common reasons the USPTO refuses a trademark are likelihood of confusion — your mark is too similar to an existing registration for related goods or services — and descriptiveness — your mark simply describes what you sell. Most other refusals involve the specimen, the description of goods and services, or other technical requirements.
1. Likelihood of confusion (Section 2(d))
The examiner will refuse your mark if it is similar enough to a registered or earlier-filed mark that customers could think the two come from the same source. The two biggest factors are how similar the marks look, sound, and mean, and how related the goods or services are. The marks do not have to be identical — in a hypothetical example, “Bluestone Coffee” could be refused over an earlier “Blue Stone Roasters.”
How to avoid it: run a clearance search before you file. A knockout search catches obvious conflicts; a comprehensive search catches the close calls.
2. Merely descriptive (Section 2(e)(1))
A mark that immediately describes a feature, ingredient, purpose, or quality of the goods or services is refused as merely descriptive. “Creamy” for yogurt or “Fast Plumbing” for plumbing services are classic examples. The law wants those words available to every competitor.
How to avoid it: choose a suggestive, arbitrary, or invented name. Our guide on how to choose a strong trademark explains the spectrum. If you are already committed to a descriptive name, registration may still be possible on the Supplemental Register or after the mark acquires distinctiveness through use, often after five years of substantially exclusive use.
3. Generic terms
A generic term — the common name for the product itself, like “Coffee” for coffee — can never be registered, no matter how long you use it.
4. Other common refusals
- Primarily a surname: a mark that is just a last name, like “Anderson’s,” is refused until it acquires distinctiveness.
- Geographically descriptive: “Minnesota Maple Syrup” for syrup made in Minnesota.
- Failure to function: a common phrase or slogan that customers would see as information rather than a brand.
- Specimen refusals: the specimen does not show the mark used with the goods or services as claimed.
- Identification of goods and services: descriptions that are vague or too broad. See drafting goods and services descriptions.
What happens after a refusal?
A refusal arrives as an office action. You generally have three months to respond, with one extension available. Many refusals can be overcome with legal argument, evidence, an amended description, a new specimen, or a disclaimer. If a final refusal stands, you can appeal to the Trademark Trial and Appeal Board.
Not sure your name will survive examination? Try our free trademark registrability checker, then talk to an attorney before you file.
Frequently asked questions
What is the most common reason a trademark is rejected?
Likelihood of confusion with an existing registration is the most common substantive refusal, followed closely by marks that are merely descriptive of the goods or services.
Can I fix a trademark refusal?
Often, yes. Many refusals can be overcome by responding to the office action with legal arguments, evidence, an amended description of goods and services, a substitute specimen, or a disclaimer.
Will I get my filing fee back if my trademark is refused?
No. USPTO filing fees are not refunded if the application is refused, which is why a clearance search before filing is worth the cost.
Can a descriptive trademark ever be registered?
Sometimes. A descriptive mark can be registered on the Supplemental Register or, after it acquires distinctiveness through use, on the Principal Register.
This article is general information, not legal advice. Every situation is different — talk to a trademark attorney about yours.
Trademark strength guides
Where a name falls on the distinctiveness spectrum decides how easily it registers and how far your rights reach. Our Minnesota trademark attorney guides cover each category:
- Fanciful trademarks: invented words, the strongest protection
- Arbitrary trademarks: real words used for unrelated products
- Suggestive trademarks: names that hint without describing
- Descriptive trademarks: registrable only with acquired distinctiveness
- Generic trademarks: never protectable, and how to avoid genericide