The USPTO, or United States Patent and Trademark Office, is an agency within the U.S. Department of Commerce. The agency handles matters related to intellectual property and functions as the national authority able to grant patents and register trademarks. Can you use a trademark that has been rejected by the USPTO? The short answer is yes, but it depends on why it was rejected. Using a rejected trademark has the potential to put you at risk of legal action.

Reasons Why Your Trademark May Get Rejected

In order for your trademark to be officially registered and legally protected by the USPTO, your trademark application must fall within a set of standardized guidelines. To avoid businesses running into trademark infringement and other similar issues, the USPTO developed a scale of qualifications that any proposed trademark must fit within to pass onto the registration process.

Examining attorneys within the agency will review your application to determine that it was filed correctly and whether there are any plausible grounds for rejection. A trademark professional can turn down your submission if it includes significant similarities to another presently registered trademark within the same marketplace of goods and/or services as your business. Trademarks that are overly descriptive or deceptively misdescriptive are also likely to face rejection.

If your proposed trademark’s primary function is only decorative or too generic, it’s less likely to pass the examination phase, let alone garner a great deal of protection. A trademark is more likely to be approved if its defining terms are suggestive, distinctive, arbitrary, and fanciful. It’s not uncommon for your initial trademark application to be denied, and there are various approaches you can take after receiving a rejection.

How a Trademark Attorney Can Help You After a Refusal

If you received a refusal from the USPTO about your trademark, it is still possible to use it, although it won’t receive the same protections as officially registered trademarks. Furthermore, if your submission was rejected due to being too similar to an existing trademark, you are advised to reevaluate the specific elements of your trademark and refrain from using it. Using this rejected trademark may put your business at risk if the owners of the existing trademark decide to take legal action against you.

However, if you believe the examining attorneys made a mistake in rejecting your trademark, you have the option to resubmit it for consideration. If this second submission is also denied, your options are to file an appeal for the application or to alter aspects of your trademark before sending in a new proposal submission.

If your trademark was rejected for reasons other than closely resembling another business’s trademark, you may be able to proceed using it without a USPTO registration. Whatever the case, it’s strongly recommended that you consult with an experienced attorney who’s qualified in intellectual property and trademark matters.

Your lawyer can assist you during the registration process by ensuring all paperwork is correct, avoiding potential infringement issues by conducting a comprehensive search, and helping you change your trademark accordingly if rejected. They are also a valuable resource for other crucial steps of registering and enforcing a trademark.

FAQs

Q: Can You Use a Rejected Trademark in the Marketplace?

A: Yes, it’s possible to use or continue using a trademark in the market even after it’s been rejected by the USPTO. However, an unregistered trademark doesn’t have the same protection as official trademarks.

This means you’re susceptible to other businesses claiming trademark infringement and consumers potentially getting your business confused with similar ones within the sector, among other issues. If your trademark was rejected based on similarities to an existing mark, it’s wise to speak with an attorney about your options.

Q: Is a Canceled Trademark the Same as a Rejected One?

A: A canceled trademark and a rejected trademark are both invalid for USPTO registration. The difference is that a canceled trademark was once registered but canceled at some point because another party petitioned for cancellation or the trademark owner failed to renew the registration.

Similarly, an abandoned trademark has been sent to the USPTO but has not been followed up on by the filing party. Using a canceled or abandoned trademark should be considered cautiously for the same reasons as using a rejected trademark.

Q: What Are Reasons My Trademark May Be Deemed Invalid?

A: Your trademark may be deemed invalid for several reasons. One reason is an incomplete or incorrect application. Other reasons include your trademark being too similar to an existing one, generic, vague, commonplace, merely descriptive of the goods/services, misleading or confusing, purely decorative, or not distinctive.

Sometimes, the USPTO attorney makes a mistake, or simple corrections can be made before reapplying. Whatever the circumstances may be, working with a qualified trademark law professional means you’ll have to guide you through the necessary steps.

Q: Can You Use a Trademark While It’s Pending?

A: If your trademark has been approved for registration but is still pending, you may still use the trademark. It is important to note, however, that you cannot use the symbol denoting registration (®) with it. Pending trademarks have limited protection, and you cannot lawfully assert intellectual property rights during this period. You may opt to use the service mark (℠) symbol or trademark symbol (™) at any time, but using the registration symbol prematurely is a legal offense in some jurisdictions.

Q: Do I Need to Register My Trademark?

A: You’re never required to register a trademark, but doing so has many benefits. A trademark is an effective way to build the recognition and reputation of your business— making it distinctive to consumers and setting it apart from competitors, especially in an oversaturated business market.

The benefit of registering a trademark is that only your business can reap its benefits. This means you’re protected by federal law from trademark infringement and can enforce your intellectual property rights.

Speak With an Experienced and Adept Trademark Law Firm

At Four Reasons Legal, our qualified team of trademark lawyers can help you if your application has been rejected or canceled by the USPTO. An experienced attorney can even help you with filing your initial trademark submission to avoid any likely grounds for refusal. We’ve secured countless clients with their various legal issues surrounding trademark registration, enforcement, and claims of infringement. We can help you, too. Contact our office today.