For every successful trademark registration, there are many others that don’t make it past the U.S. Patent and Trademark Office’s (USPTO) review. These refusals are not just bureaucratic obstacles; they are lessons in what can go wrong when a brand name or logo is not properly vetted or strategically presented. Entrepreneurs and startups, especially those filing without legal guidance, often find themselves surprised by an unexpected refusal. But by understanding why the USPTO rejects certain applications, you can position your brand for a much smoother approval.

At Cohn Legal, PLLC, we’ve helped countless founders navigate the trademark process and overcome the common pitfalls that lead to refusals. Below, we’ll explore real-world examples and insights into what the USPTO looks for when reviewing a trademark application.

What Is a Trademark Refusal?

A trademark refusal occurs when the USPTO examining attorney reviews your application and finds a legal reason that prevents it from being approved for registration. The reasons for refusal are outlined in the Trademark Act, also known as the Lanham Act. These refusals come in the form of an “Office Action,” which is a formal document explaining what went wrong and what you can do to fix it.

Some refusals can be resolved with clarification or additional evidence. Others are more serious and may require significant legal argument or even an appeal to the Trademark Trial and Appeal Board (TTAB). The good news is that most refusals are avoidable with proper planning and a well-executed filing strategy.

Example 1: The “Likelihood of Confusion” Refusal

One of the most common reasons the USPTO refuses a trademark is the “likelihood of confusion.” This happens when your mark is too similar to an existing registered mark or pending application in terms of sound, appearance, meaning, or commercial impression.

For example, if a company called “TechNova Software” applies for a trademark and there is already a registered “TekNova Systems,” the examining attorney may refuse registration because the marks look and sound alike, and both deal with technology services. Even small spelling variations or stylistic differences are often not enough to overcome confusion if the overall impression is similar.

To avoid this, conducting a thorough trademark clearance search before filing is essential. A professional search looks beyond exact matches and evaluates similar names in related industries. This step is one of the most effective ways to prevent refusals based on confusion.

Example 2: The “Descriptiveness” Refusal

Another frequent reason for refusal is that a mark is considered merely descriptive. The USPTO defines a descriptive trademark as one that directly describes an ingredient, quality, characteristic, function, or purpose of the goods or services.

For instance, if you try to register “Crunchy Granola” for breakfast cereal, the USPTO will likely reject it because the phrase immediately tells consumers what the product is. Similarly, a law firm attempting to register “Startup Legal Services” would face a descriptiveness refusal, as it plainly describes the nature of the services rather than distinguishing the brand.

Descriptive marks can only achieve registration on the Principal Register if they have acquired “secondary meaning,” which means that consumers associate the term with your specific company rather than the product itself. However, that typically takes years of use and significant marketing. When possible, choosing a suggestive or arbitrary name, such as “Blue Planet Granola” or “Cohn Legal,” helps create stronger protection and a more distinctive brand identity.

Example 3: The “Deceptive” or “Misdescriptive” Refusal

The USPTO will also refuse registration if a mark is deceptive or misdescriptive. A deceptive trademark falsely describes the goods or services in a way that would mislead consumers.

For example, a company trying to register “Organic Essence” for skincare products that contain synthetic chemicals would face a refusal because the mark inaccurately suggests the goods are organic. Similarly, “Swiss Timepieces” for watches made in China would likely be denied for misrepresentation of origin.

The lesson here is that honesty and accuracy matter. The USPTO wants trademarks that inform, not mislead, and protecting the consumer marketplace from deception is one of its core functions.

Example 4: The “Primarily Geographically Descriptive” Refusal

Trademarks that primarily describe a geographic location are another category often refused by the USPTO. For example, “Napa Valley Wines” or “Seattle Roasters” might face a refusal unless the applicant can prove that the brand has achieved distinctiveness beyond its geographic meaning.

This type of refusal prevents businesses from monopolizing place names that others in the region might also need to describe their products or services. The exception is when a geographic mark becomes so closely associated with one company that it takes on a new identity, think “Kentucky Fried Chicken.”

Example 5: The “Failure to Function as a Trademark” Refusal

The USPTO requires that a mark actually serve as an identifier of source. That means it must distinguish one company’s goods or services from those of others. Some applications are refused because they fail to meet this basic requirement.

For instance, a slogan like “Proudly Made in the USA” cannot be registered because it’s a common phrase used by many businesses to indicate origin, not brand identity. Similarly, marks that consist only of ornamental designs, such as a decorative phrase on the front of a T-shirt, often fail this test.

To ensure your mark functions as a trademark, it should appear in a way that communicates branding such as on labels, tags, or product packaging rather than as mere decoration.

Avoiding Trademark Refusals

The best way to avoid a refusal is to start with strategy. A professional trademark clearance search, conducted by an experienced attorney, can identify potential conflicts before filing. Next, the application must be drafted carefully to ensure accurate classification and description of goods and services. Each word matters, and even slight misstatements can trigger scrutiny.

If you do receive an Office Action, take it seriously. The USPTO allows six months to respond, and working with an attorney during this stage can make a substantial difference in your outcome. Experienced counsel knows how to craft persuasive arguments, provide evidence of distinctiveness, and in some cases, amend the application to satisfy the examiner’s concerns without losing brand strength.

At Cohn Legal, PLLC, our team works with startups and entrepreneurs nationwide to ensure their trademarks are filed strategically, reviewed thoroughly, and protected for the long term. We believe that every founder deserves a strong legal foundation for their brand and that starts with avoiding unnecessary refusals.

Final Thoughts

Trademark refusals are not the end of the road, but they can be costly and time-consuming to fix. With the right approach, most can be prevented entirely. Understanding how the USPTO evaluates applications helps you create a brand that not only stands out in the marketplace but also passes legal review without hurdles.

If you are serious about protecting your business name, logo, or slogan, reach out to Cohn Legal, PLLC. Your brand is worth every step it takes to secure it.