Why offices refuse a trademark

A trademark can be stopped in two ways. The office can refuse it on its own, because of the mark itself or because of an earlier mark it finds. Or a third party can oppose it after it is published. The reasons below are the common ones. Rules differ from country to country.

Problems with the mark itself

Offices call these absolute grounds. They apply whatever others own.

The mark only describes

A name that tells customers what the goods are, their kind, quality, purpose or origin is often refused. “Fresh Bakery” for bread tells the customer what it is and says nothing about who makes it. Everyone in the trade should stay free to use such words.

The mark is the everyday name of the goods

The ordinary word for the goods themselves, such as “Apple” for apples, cannot be a trademark for those goods. The same word can be a fine mark for goods that have nothing to do with it.

The mark is too plain to tell businesses apart

Very simple signs, common phrases and plain shapes may not do the job of a trademark, which is to show where goods come from. Adding a distinctive element can help.

The mark could mislead

A mark that suggests a quality or an origin the goods do not have can be refused.

The mark is against the law or public order

Many countries refuse marks that are offensive, or that copy flags, state emblems or official signs.

Problems with earlier rights

Offices and opponents call these relative grounds. They depend on what others already own.

An earlier mark that is too similar

The main reason a new mark is stopped: an earlier mark that is identical or similar, for goods or services that are identical or similar, so that customers might mix them up. The more alike the marks and the goods, the greater the risk. In some countries the office checks this itself. In others it acts only when someone opposes.

A well-known mark

A mark that is very widely known can sometimes be protected even for different goods, or in places where it is not registered. A name close to a famous brand is risky.

Bad faith

A mark filed with no real plan to use it, or only to block or exploit someone who is known to use it, can be refused or cancelled in many countries.

Problems with the application

Sometimes the mark is fine and the application is not: goods and services listed unclearly or in the wrong class, missing documents, or a missing local representative where the country requires one. These are usually fixed by answering the office on time.

What happens next

• Objection. The office writes to say what it sees as the problem and sets a deadline. You can answer, narrow the list of goods and services, or change the mark. See office action response.
• Opposition. After publication, a third party has a period set by the office to oppose. Examples: 30 days in the US, 2 months in the UK, 3 months in the EU. See the filing process.
• A reply or an opposition is extra work. We quote it separately and in writing before we start. See charged only if it happens.
• A full dispute. If an opposition, a cancellation action or an appeal has to be contested in the country concerned, we arrange it through one of our partners there. See trademark disputes.

How to lower the risk

• Choose a name that suggests rather than describes. Use the name check.
• Search for earlier marks before you file. Request a search.
• List your goods and services with care. Use the class finder.
• Watch for similar new filings after you register. Monitoring.

Unfamiliar word? See the glossary. This page is general information and is not legal advice.