Learn the basics
Why trademarks get refused
If you've just received an Office Action, you're not alone — refusals are common, and most of them fall into a small number of well-understood categories. Here are the two that come up most often, in plain English.
Likelihood of confusion (§2(d))
USPTO refuses registration when your mark, used on your goods or services, is similar enough to an existing registered mark that consumers could reasonably confuse the two. This isn't about whether the marks look or sound identical — it's a multi-factor test (the DuPont factors) weighing similarity of the marks themselves against relatedness of the goods/services, among other things. A knockout search before you file exists specifically to surface these conflicts while you can still pick a different name — it's far cheaper to find this out before you pay a filing fee than after.
Merely descriptive (§2(e)(1))
A mark that simply describes a feature, quality, or characteristic of your goods or services — rather than identifying their source — generally can't function as a trademark on its own. "COLD" for ice cream describes the product; it doesn't tell a customer who made it. This is one of the most preventable refusals, because it's knowable in advance: understanding where a name falls on the spectrum from generic to fanciful is exactly what a distinctiveness estimate is for.
The distinctiveness spectrum — real, public examples
Generic
ASPIRIN
Never protectable — this literally IS the product name.
Descriptive
HOLIDAY INN
Protectable only after acquired distinctiveness (§2(f)).
Suggestive
GREYHOUND
Hints at a quality (speed) without describing it directly.
Arbitrary
APPLE (for computers)
A real word, unrelated to what it names.
Fanciful
KODAK
A coined word with no prior meaning at all.
Weaker protection on the left, stronger on the right — none of these are opinions about any specific mark, just how USPTO and courts have classified these well-known, public examples.
A close third: specimen problems
Even a strong, clearable mark can get refused if the proof you submit that you're actually using it doesn't meet USPTO's requirements — a mockup instead of a real product photo, or an ad instead of the product itself. This one's specific to marks filed based on actual use, and it's also entirely preventable with the right checklist before you submit.
If you already have an Office Action
The refusal type in your Office Action determines what happens next, and the general paths forward differ by type — arguing the marks aren't actually confusing is a different conversation than arguing your term isn't actually descriptive. Understanding which category you're in, and what the generally available responses are, is the first real step.
Sources
- 15 U.S.C. §1052(d) — likelihood of confusion refusal basis
- TMEP §1207.01 — Likelihood of Confusion (the DuPont factors)
- 15 U.S.C. §1052(e)(1) — merely descriptive refusal basis
- TMEP §1209.01(b) — Merely Descriptive Marks
- TMEP §904.03 — Material Appropriate as Specimens
- Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4 (2d Cir. 1976) — the distinctiveness spectrum
Citations verified 2026-09-05. USPTO occasionally renumbers TMEP sections — if a link above doesn't land where expected, the citation text itself remains the accurate reference to search for directly.