What are the most common reasons for receiving a trademark office action?

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Written by Jan Buza

Co-founder of Trama

The two most common grounds for a trademark office action are likelihood of confusion and descriptiveness.

Likelihood of confusion arises when the examiner identifies an earlier registered or pending mark that is similar enough to the applied-for mark that consumers might confuse the two sources. This is the most frequent basis for refusal in the US.

Descriptiveness arises when the mark merely describes a characteristic of the goods or services rather than identifying their source. Marks that are generic, laudatory ("Best Quality"), geographically descriptive, or primarily a surname fall under this ground.

Other common reasons include formal deficiencies (errors in the application details, missing fees), specimen issues (US-specific, where the specimen does not clearly demonstrate use in US commerce), and goods and services descriptions that use terminology not recognized by the IP office.

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