Was Your Trademark Application Rejected?

Luckily, getting rejected for a trademark application doesn’t mean the end of the road! Your situation is not as bleak as it may seem. Counxel Legal Firm can help. 

Trademarks matter. It likely comes as no surprise that virtually every business these days has a name, design, or catchphrase associated with their products or services. Most business owners want to have the security blanket of federal recognition by the United States Patent and Trademark Office (USPTO). If you’ve had a recent USPTO application rejected, it’s time to pivot and readjust your strategy to best protect your business. This is where Counxel Legal Firm can help you understand what the Examining Attorney at the USPTO is looking for to obtain the trademark protection you need!

But first, let’s understand what registration of your mark really means.

What Does Registration Do?

Registration of a mark with the USPTO gives you a statutory right of notice. That means other parties will be deemed by federal statute to be on notice that your mark is in use. This is especially important if you end up dealing with a competitor infringing on your mark.

If you file a lawsuit for infringing on your intellectual property, the court will ask whether your opponent knew (or should have known) that the mark was in use. A mark registered with the USPTO saves you a step in the legal battle by allowing you to prove that individuals and businesses throughout the United States knew it was in use. In short, your adversary cannot feign innocence.

What Do I Do Next?

  1. Abandonment. You can withdraw your application or allow the application to lapse, which will cause the application to be ‘abandoned.’ This is the simplest response to rejection; it ends your application and potentially saves you thousands in legal fees.
  2. Appeal. Another option is an appeal to the Examining Attorney’s decision. This goes to the Trademark Trial and Appeal Board, which is the costliest and most aggressive position to take. The appeals board may defer to the examiner’s judgment, at which point all that’s left is to appeal the board’s decision to the Federal Court of Appeals. 
  3. The Modern Approach. Recently, a cutting-edge strategy has emerged to build up common-law rights to a mark over a span of five years by expanding your business across state lines. This approach comes with risks of its own that are best handled by an experienced attorney. State authorities have notoriously different application rules, and it can take a long time to get back to the USPTO with no guarantee of success. The upshot is that when the modern approach is successful, you end up with trademark protection without the extreme costs of fighting all the way to the Court of Appeals. This may seem like the most attractive option, but the truth is that each business has its own unique needs and risks.

Contact Counxel

The bottom line is that there is no one solution that will work for every application. Obtaining a trademark from the USPTO can be complicated, and each unique business will have its own path to success with an Examining Attorney. If you’ve recently received a rejection letter from a USPTO examiner, contact Counxel Legal Firm immediately to plot your path to success.