Refused Does Not Necessarily Mean That You Have to Abandon Your Mark

All the facts are important when a trademark owner gets a refusal. Sorting out the facts requires experience and knowledge. Answering your trademark refusal may be the first step in strengthening your trademark rights and Not Just Patents Legal Services wants to help you step forward. When we talk with people who have already gotten quotes from other firms, the money saved by working with us instead of some others may be hundreds of dollars.

Usually it doesn’t stop at answering the refusal. Most of our clients go on to register additional stronger marks with us. Registration of new strong trademarks puts you in a legal position to stop trademark hostage takers by using federal help and help from the policies of Google, Facebook, Twitter, domain name registrars, web site hosts and others whose policies favor USPTO registered marks. Infringement, dilution, and cybersquatting can all hurt your business when someone interferes with your rights. A weak mark is a much narrower shield from harm and can be difficult to enforce. We usually look at a client’s web site to look for other registrable material. Sometimes blocking a competitor from being higher than you on a Google result requires more strategy and more ammunition than one weak trademark can provide especially a trademark that has just been refused for a weakness that will continue even after the office action is answered.

Support: The Strength of your trademark depends not just on the selection of an inherently strong mark but also how you use the mark on your products and services (how it is perceived), and the existence of competing uses of other, similar marks. Visa Intern. Service Ass'n v. Eastern Financial Federal Credit Union, 967 F.2d 596 (C.A.9 (Cal.), 1992). Using your mark is an valid manner supports its strength. Designing advertising with trademark strength in mind not only makes your trademark stronger but can also improve your search engine scores. We help support our clients by reviewing web sites and advertising to assure that trademarks are being used in a sustainable and valid manner.

Once registered, we can help you to support, sustain and build your trademark rights.

Security: Correctly identifying existing and potential  threats and strategizing how to combat these threats before you apply for federal registration puts your registration in order to stand up to hostage takers or attacks. Simply filling out a form with not enough knowledge of the law and strategy may get a registration that will not stand up to even the smallest threat or may result in no registration at all! (Only 30% of trademark applications have no office actions and refusals. Many result in abandonment with the current rate of abandonment running at about 41% of applications.)

Rescue: Is someone else, a newcomer to the market, using your trademark? If someone is holding your trademark hostage at the USPTO, in Google or Yahoo advertising, on Twitter, on Facebook, in their domain name, or somewhere else where it hurts you, we can help! Rescuing your trademark may involve an opposition or cancellation proceeding, a letter of protest, sending cease and desist letters and following them up with appropriate actions. A rescue may involve fighting someone who is inappropriately trying to make you stop use a mark that you have rights in. Just because someone wants you to stop does not always means that they have the right to stop you, some trademark owners regularly send out cease and desist letters that are unenforceable trying to intimidate smaller competitors into relinquishing their good will.

Minimize Problems and Maximize Property Value: Sometime losing a trademark means losing a lot of goodwill and business. Sometimes losing a trademark is better than losing a lot of money in legal fees or damages. Knowing what battles are worth fighting can make a difference to being able to stay in business. Choosing a trademark that is unique and inherently strong can minimize future challenges and build goodwill that is uniquely yours rather than divided up amongst all the others with similar sounding names.


A plan for a strong trademark is one that looks ahead to issues like:

  • Can I claim exclusive rights to use this trademark?
  • Does this trademark meet the qualifications for being registered on the USPTO Principal Register?
  • Is this trademark strong enough that others would want to license it from me?
  • Does this trademark have potential to extend to other product lines?
  • Is this mark inherently distinctive?
  • Are there others users of this mark that could prevent me from using this mark or would sue me or prevent me from getting federal registration because they can prove they are prior users?
  • Are there valid reasons for someone to oppose or cancel the mark because the mark doesn’t qualify for protection or because they have superior rights?
  • Would the USPTO find a likelihood of confusion with someone else’s registered or pending trademark and prevent my registration of this mark?
  • Would a court enforce the use of this trademark?
  • Do I have to somehow acquire distinctiveness for this mark before it would be recognized as being protectable? Does this mark use such common terms that it would be called a weak trademark?
  • Is this mark descriptive or deceptive or geographically descriptive?
  • Do I use the mark in a way that increases my rights or am I using it in a way where it does not function as a trademark?

These are all good questions to consider before adopting a trademark for use because if you are planning to succeed, it may be a good idea to be able to work that plan rather than abandoning it. The abandonment rate of trademark applications at the USPTO (trademarks that did not issue) is very high, 40-50% of applications never register.

All of the above questions involve fact-related answers. Knowing the rules is really important, being able to apply the rules to facts is even better.

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PO Box 18716, Minneapolis, MN 55418  


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Call 1-651-500-7590 or email for Responses to Office Actions; File or Defend an Opposition or Cancellation; Patent or Trademark Searches and Applications; Send or Respond to Cease and Desist Letters.

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    Oppositions-The Underdog

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  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   Protect Business Goodwill

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

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  Not Just Patents Often Represents the Underdog  

What Does Published for Opposition Mean?

What to Discuss in the Discovery Conference

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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