What is a Merely Descriptive Trademark Refusal?

merely descriptive trademark

After you file your trademark application, the United States Patent and Trademark Office (“USPTO”) may issue a trademark office action indicating that your mark is being refused registration on the basis that it’s merely descriptive of your products and/or services.  This merely descriptive trademark refusal is based on the trademark examining attorney’s belief that your mark merely describes a characteristic, feature, quality, function, or purpose of the products/services listed in your application.  Descriptiveness refusals are extremely common because people who file their own trademark applications or use a trademark document preparation service like LegalZoom, Trademarkia, or Trademark Engine aren’t generally aware that registering merely descriptive words and phrases as trademarks can be very difficult, if not impossible.

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Likelihood of Confusion – What Does It Mean in Trademark Law?

Have you received a trademark office action indicating that your trademark application has been rejected because of a likelihood of confusion with another trademark?  In other words, has the trademark examining attorney found your mark to be “confusingly similar” to another mark?  Under Section 2(d) of the Trademark Act, the Trademark Office is obligated to refuse registration of your trademark if it’s likely to cause confusion with a mark in an existing registration.  Of course, what’s considered “confusingly similar” can be very subjective indeed.  For example, if you want to register ABC for clothing and somebody already owns a federal registration for ABC for electric generators, the Trademark Office will probably not reject your application since clothing and electric generators aren’t products that would generally be perceived as being similar, related, or emanating from the same source.  But, what about ABC for clothing and ABC for watches?  In that instance, would there be a likelihood of confusion?

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What is a Final Office Action?

A final office action is issued by the United States Patent and Trademark Office (“USPTO”) if you didn’t successfully or properly respond to all of the issues raised in a previous trademark office action.  If you fail to take action within six months from the date the final office action is sent, your trademark application will go abandoned and you’ll have little choice but to begin the US trademark registration process all over again.

If you receive a final office action, you basically have three options:

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