Next Steps After a Denied Trademark 

The mark you have sought to register with the United States Patent and Trademark Office (USPTO) may be denied for various reasons, leading to a rejection of your trademark application. Getting stuck on why a trademark is rejected can keep you from moving forward in the trademark process. Protecting your Phoenix intellectual property when a trademark is denied may be possible through these next steps.

File a New Application

Your business’s logo, name, or identifying mark may closely resemble that of another business already trademarked. Making simple to moderate changes to your mark may permit you to submit a new trademark application. A new application may sound simple, but some of the obstacles you may face include:

  • A rebranding of the business
  • Filing new documentation with the State’s business authorities
  • Updating your logo and mark on your product or business
  • Making necessary changes to the business structure

Weighing the options and protecting against Phoenix intellectual property disputes is critical to the strength and survival of a new business. Weigh your options with an experienced advisor before moving forward.

Consider an Application Withdrawal

Letting an application lapse will render it abandoned, ending the trademark process. While this may seem the most straightforward method, withdrawing an application or letting it lapse may leave the intellectual property you have worked hard for vulnerable and unprotected, meaning another business may use it.

Appeal the Denial

An intellectual property disputes attorney in Phoenix can help you decide if an appeal is worth your time. The Trademark Trial and Appeal Board will review the decision and application, and its attorney’s decision will be examined to determine if the denial was the appropriate step. After this step, appealing to the Federal Court of Appeals may be an option. It is critical to note that the appeals process is often time-consuming and costly.

Consider Negotiations

When a trademark is denied because of its similarity to an existing registered mark, an agreement may be reached with the trademark owner to coexist in the workplace or to establish a consent-to-use agreement. The examining attorney will consider the agreement but is still not required to approve your mark.

Additionally, reaching out to the owner of a trademark can make you vulnerable to application challenges. Business is often competitive, and working with other trademark owners to peacefully coexist may be difficult. Always seek guidance before bearing your business information to another entity without protection.

File a Request for Reconsideration

You may have new information or documentation that supports and justifies the approval of your mark. If so, any additional information will be considered in the review. This step may be more feasible than an appeal. It often depends on the strength of the documentation you provide.

Consider a Business Expansion

Each State has its own rules that apply to trademark applications. Expanding your business into another state may allow you to apply for a trademark elsewhere. Filing a new application will be necessary and can involve a lengthy process. Depending on your unique circumstances, multiple variables and laws may support your expansion or work against you.

Receiving experienced legal advice and guidance is always recommended. Options are always available, but discovering the best way to proceed after a trademark denial often comes through the thoughtful guidance of a Phoenix intellectual property attorney with a grasp on laws that will impact and benefit you most.