Creating a unique name, logo or slogan for your product or service business comes with the responsibility to trademark the name, logo or slogan to ensure that another company or person does not use the idea for their own financial gain. The Trademark Trial and Appeal Board (TTAB) is tasked with hearing appeals of trademark application denials and determining who has the right to a trademark when two or more people or businesses are in a dispute. Understanding how to ask the TTAB to hear a case and the resulting trial that will occur can help people who are facing a denial of their trademark application.

What is the TTAB?

The TTAB was created by the U.S. Patent & Trademark Office for the purpose of hearing disputes between people who apply for, or already own, trademarks. The proceedings that take place through the TTAB in order to determine who owns a trademark include the opposition of a trademark application and the cancellation of a trademark registration (in the case that a registration is found to violate the trademark rights of another entity).

If the U.S. Patent & Trademark Office refuses an application for a trademark, the TTAB oversees appeals trials. Any applicant who is refused a trademark has the right to file an appeal.

Appealing Trademark Refusals

When a trademark application is refused, those who are trying to protect their names, logos or slogans can feel frustrated and confused about why their application was denied. Fortunately, it is possible to appeal the decision. Here is what trademark applicants need to know about filing an appeal.

Responding to an Office Action

The Trademark Office will issue an Office Action when there is a problem with the application. If an application is denied due to reasons like the possibility that the new trademark will be confused with a trademark that is already owned by another entity, this reason will be cited in the Office Action. It is also possible for an applicant to receive an Office Action when certain requirements of the application, like a disclaimer for a descriptive term, are not met. The Office Action cites each problem in order to explain why the application is being refused.

Applicants are given six months from the date that the Office Action was issued to respond to the refusal. This response should either include changes to the initial application that ensure it is in compliance with regulations and requirements, or arguments that outline why the trademark should have been approved.

If the Trademark Office agrees with the response, it has the option to approve the application. Alternatively, a Final Office Action may be issued to inform the applicant that the application is formally denied. Applicants are given six more months to write a response to the Final Office Action or file an appeal.

What Happens If Your Registration Attempt Is Refused?

When an application for a trademark is refused and the response to the Office Action does not result in an approval, applicants have the option to appeal the refusal. The TTAB will hear arguments in favor of registering the trademark from the applicant, and an Examining Attorney who works for the Trademark Office will present evidence outlining the reasons for the Trademark Office’s decision to refuse the trademark application.

Well-Known Trademarks That Were Initially Denied

People who are applying for a trademark may feel frustrated when they receive a denial, but they are not the only ones who have gone through the process of being denied and having to appeal. There are instances of famous trademarks that were initially refused when the application first reached the Trademark Office.

Apple’s “TOUCH ID” trademark was denied by the Examining Attorney during the initial application phase because it was believed that the mark could be confused with a trademark that was already registered by another party. The Examining Attorney also claimed that the wording of the mark was merely descriptive, meaning that the applied-for mark merely described an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods and/or services.

Apple responded to the Office Action with arguments in favor of approval their trademark application. The company asserted that the term “TOUCH ID” was not merely descriptive because it had acquired distinctiveness, and it also presented arguments against the claim that the trademark would be confused with another prior-registered trademark. After responding to the Office Action with arguments in favor of approval, the refusals were withdrawn and the application was approved.

Google’s “NEXUS ONE” trademark was also denied by the Examining Attorney due to the possibility of the trademark being confused with another mark. The Trademark Office claimed that the trademark could be confused with the use of NEXUS in relation to telecommunications by a prior applicant. Google responded to the Office Action by outlining the instances of confusion that might exist according to the Trademark Office, and providing arguments against these scenarios.

The Trademark Office then sent a Final Office Action to Google, and amendments to the initial application were made to strengthen the company’s argument in favor of the application. The trademark was accepted after Google submitted additional arguments.

The Trademark Trial Process

If a trademark dispute goes to trial, applicants can expect the process to follow a formula set forth by the TTAB. After the initial Office Action and response, a Final Office Action may be sent denying the application. This is the point at which an applicant has the option to appeal.

If an appeal is filed, the TTAB will evaluate the application and read the arguments made by the applicant in favor of approving the application. The TTAB will also examine evidence for the denial that is submitted by the Trademark Office to make a final ruling on the application. It is best for the applicant to have a legal professional with trademark experience review the documents related to the application in order to form a solid argument. Denials of appeals are common, so legal help is essential.

The TTAB may also inform the applicant that another person is opposing the applicant’s attempt to register a trademark. Others are also able to ask the TTAB to cancel a trademark registration. As with appealing an application, it is important for trademark owners and applicants to hire an attorney for help with TTAB trials.

Further Reading