Question:
When is it smarter not to apply for trademark registration?
Answer:
Because the United States Patent and Trademark Office (USPTO) takes a narrow approach to what can be registered as a trademark, sometimes your mark might be considered confusingly similar under the USPTO’s standards while not rising to the level of actual trademark infringement. This could result in your application being rejected and alerting holders of the similar trademarks. Those holders will potentially use the USPTO’s rejection of your application as evidence of infringement in a cease and desist letter. This can be avoided by first having an attorney conduct a comprehensive trademark search and then refraining from applying if you are in the gray area where the USPTO might reject you without the mark rising to the level of actual trademark infringement.
The USPTO’s Standards for Rejecting Trademark Applications
The USPTO will look primarily at two things when determining whether to reject a trademark application: whether a mark is too descriptive and whether a mark is confusingly similar to another registered trademark. This post will focus on the second factor: whether a mark is confusingly similar.
What Happens When the USPTO Rejects a Trademark
Right out of the gate, it is important to note that you should always have an attorney conduct a comprehensive trademark search before you apply to register your trademark. If you can find out at the outset that there is a similar mark out there, you can potentially avoid even having to go through with the application.
For its part, the USPTO takes a very narrow and strict approach to what it considers to be confusingly similar. However, the mark that you’re applying for that the USPTO says is confusingly similar under its standards may not be very similar at all as a practical matter, and may not rise to the level of trademark infringement.
If the USPTO rejects your mark for being confusingly similar to another, already registered mark, one of the things that can happen is that a company that holds the similar mark can hit you with a cease and desist letter, because they will likely be alerted to the rejected application and they will then be able to lean on the USPTO’s rejection of your trademark. However, without that rejection of your slightly similar mark, many holders of trademarks won’t notice your trademark and won’t see it as trademark infringement.
To Wrap Up….
The USPTO’s standards for rejecting a mark for being confusingly similar are very strict. They take a very narrow approach to approval of trademark applications, but their rejection doesn’t necessarily mean the trademark being applied for rises to the level of actual trademark infringement. If the comprehensive trademark search you had done at the beginning reveals a slightly similar registered trademark, you can save yourself some time and effort by not applying at all. Moreover, companies that would otherwise not notice your mark or think it constituted trademark infringement at all could use the USPTO’s rejection of your similar mark to send you a cease and desist letter if you did apply.