Hi, I'm attorney Elizabeth Potts Weinstein. Today, we'll discuss eight common reasons trademark applications to the United States Patent and Trademark Office (USPTO) get rejected, and how to prevent or handle these rejections.

1. Incorrect Class or Class Description

One common reason for rejection is an incorrect class or class description. When you file a trademark application, it must be in the correct class, with a specific description. For example, a trademark for t-shirts belongs in a different class than one for life coaching. The USPTO may reject your application if the class or description is wrong. They usually suggest the correct class and description, which you can accept if accurate and within your budget.

2. Trademark and Specimen Mismatch

Your trademark application must match the specimen submitted. If you apply for a trademark for t-shirts, the specimen should be a picture of the t-shirt with the trademark on the tag or packaging. If your application and specimen do not match, the USPTO will reject it. Ensure your trademark usage aligns with your application to avoid this issue.

3. Merely Descriptive Trademarks

A trademark that is merely descriptive, like "Small Business Lawyer," is likely to be rejected. Such terms describe the business rather than distinguish it. In some cases, you may be allowed to register on the Supplemental Register, which offers fewer protections. Overcoming this rejection often requires a legal brief demonstrating why the trademark is not merely descriptive.

4. Real Address Requirement

The USPTO requires a real, physical address for trademark applications. Virtual mailbox addresses or P.O. Boxes are not acceptable. This rule aims to prevent fraud. For home businesses or international applicants, providing a domicile address is necessary, and non-U.S. entities must have a U.S. attorney to represent them.

5. Likelihood of Confusion

If the USPTO determines that your trademark is likely to cause confusion with an existing one, your application will be rejected. This can happen even if the trademarks are not identical but are similar enough to confuse consumers. Overcoming this requires a detailed legal brief proving no likelihood of confusion, which can be challenging.

6. Disclaimer Requirement

Sometimes, the USPTO will require a disclaimer for certain words within your trademark that are generic or descriptive. For instance, if you trademark "EPW Small Business Law," you may need to disclaim "Small Business Law." Disclaimers indicate you do not claim exclusive rights to these terms outside the context of your trademark.

7. Trademark Not Identifying Business Source

Your trademark must identify your business as the source of goods or services. If the trademark merely describes you personally, it will be rejected. For example, using "Small Business Lawyer" in your bio does not identify the business but rather you as an individual.

8. Office Actions and Appeals

If your application is rejected, you have opportunities to respond. You typically have six months to reply to an office action. If still rejected, you can appeal or request reconsideration. Understanding the specifics of the rejection is crucial to formulating an effective response.

By understanding these common reasons for rejection, you can better prepare your trademark application and address any issues promptly. If you have any questions, leave them in the comments below.