Filing a trademark application doesn’t guarantee registration. Every application goes to a USPTO examining attorney, and when that attorney finds a problem, they issue an Office Action, which is a formal letter explaining why the mark can’t be registered as filed. Braslow Legal works with business owners on trademark filings and Office Action responses, and the refusals below are the ones applicants run into most often. Most can be avoided with careful preparation before you file.
Why does the USPTO reject trademark applications?
The USPTO refuses applications that conflict with existing marks, fail to identify a source, or don’t meet the filing requirements of the Lanham Act, the federal law that governs trademarks. These seven issues account for a large share of refusals:
- Likelihood of confusion. Under Section 2(d), the USPTO refuses a mark that is too similar to a registered or earlier-filed mark for related goods or services. Examiners look at how the marks look, sound, and what they mean, along with how closely the products overlap. Exact matches aren’t required for a refusal.
- The mark is merely descriptive. A name that directly describes a feature of the product, like “Creamy” for yogurt, is refused under Section 2(e)(1). A descriptive mark can sometimes register later if it gains distinctiveness. The USPTO may accept five years of substantially exclusive and continuous use as evidence of this.
- The term is generic. A generic term is the common name for the product itself, such as “Bicycle” for bicycles. Generic terms can’t be registered under any circumstances, because every competitor needs to be able to use them.
- The specimen is unacceptable. A specimen is a real-world example showing the mark in use, such as a product label or a webpage where customers can buy the item. The USPTO rejects mockups, digitally altered images, and advertising that only promotes physical goods without letting customers buy them.
- The identification of goods or services is indefinite. Descriptions like “clothing” or “consulting services” are too vague. The USPTO wants specific language, and its Trademark ID Manual lists pre-approved wording. Under fee rules that took effect in January 2025, writing your own description instead of using the ID Manual adds a $200 surcharge per class on top of the $350 base fee.
- The mark is primarily geographic or a surname. Section 2(e) also covers names that mainly describe where goods come from, like “Orlando Coffee,” and words that are primarily surnames. Both can face refusal unless the applicant shows acquired distinctiveness.
- The mark fails to function as a trademark. Some wording doesn’t indicate a source at all. Common slogans, widely used phrases, and large text printed across the front of a T-shirt are often refused as ornamental or informational.
What happens after the USPTO issues an Office Action?
An Office Action is not the end of the application. Applicants generally have three months to respond, with one three-month extension available for a $125 fee. If you miss the deadline, the application is abandoned. A strong response may include legal arguments, an amended description, a substitute specimen, or evidence of acquired distinctiveness. If the refusal becomes final, you can appeal to the Trademark Trial and Appeal Board.
Which law firms serve businesses near Altamonte Springs?
These five firms work with clients in the greater Altamonte Springs area:
- Braslow Legal
- Zortman Law
- Forest Lake Law, P.A.
- Smothers Law Firm, P.A.
- Law Office of Mandy Pavlakos
1. Braslow Legal
Braslow Legal, led by Neil D. Braslow, Esq., handles intellectual property and business law for clients in Florida and New Jersey. On the trademark side, the firm prepares federal applications, runs clearance searches to spot likelihood-of-confusion problems before filing, and drafts responses to USPTO Office Actions. After registration, it monitors trademark portfolios and enforces clients’ rights, including negotiating settlements.
The firm’s other practice areas include copyright protection, business formation, contracts, website terms and privacy policies, employment agreements, nonprofit compliance, and sports and entertainment law. Braslow Legal offers a complimentary 30-minute consultation.
2. Zortman Law
Zortman Law is an Altamonte Springs firm that represents clients in civil matters.
3. Forest Lake Law, P.A.
Forest Lake Law is a law firm with an office in Apopka that serves individuals and businesses.
4. Smothers Law Firm, P.A.
Smothers Law Firm is an Apopka law office that handles a range of legal matters for local clients.
5. Law Office of Mandy Pavlakos
The Law Office of Mandy Pavlakos is a Lake Mary practice serving clients across Seminole County.
How can you lower the risk of a trademark refusal?
Most refusals come from problems that could have been caught before filing. Run a clearance search that goes beyond exact matches. Choose a mark that suggests your product rather than describing it. Use ID Manual wording where it fits, and submit a specimen that shows the mark exactly as customers see it. If you’ve already received an Office Action, note the response deadline right away and get qualified help well before it passes. A well-prepared filing or response can save months of delay and the cost of starting over.