Top 5 Mistakes You Can Prevent to Avoid Trademark Refusals
- CASTELLANO
- Jun 27
- 3 min read

Trademarks are essential for businesses to establish brand recognition, build customer loyalty, and prevent others from using similar marks. A federal trademark registration from the United States Patent and Trademark Office (USPTO) is critical for protecting trademarks, but winning a registration grant can be challenging. Many applications are refused due to avoidable mistakes.
We explore below the top five mistakes that lead to trademark refusals and provide practical tips to help you navigate the process successfully. By addressing these issues, you can increase your chances of securing valuable trademark protection.
1. Likelihood of Confusion with Existing Trademarks
One of the most frequent reasons for trademark refusal is the likelihood of confusion with an existing registered trademark or pending application. The USPTO evaluates whether your mark is similar to existing marks in terms of sound, appearance, meaning, or commercial impression, and whether the goods or services are related.
If you file an application for a mark that looks or sounds similar to an existing trademark, the USPTO could refuse registration on the basis that the similarity is confusing to consumers.
How to Avoid This Mistake:
- Conduct a thorough trademark search: Before filing, use the USPTO’s Trademark Electronic Search System (TESS) to check for similar marks.
- Modify if needed: If conflicts arise, tweak your mark or select a different one to avoid overlap.
2. Descriptiveness or Genericness
Trademarks that merely describe the goods or services, or are generic terms, cannot be registered on the Principal Register because they lack distinctiveness and fail to identify a specific source.
How to Avoid This Mistake:
- Choose a distinctive mark: Choose for suggestive, arbitrary, or fanciful marks rather than descriptive or generic ones.
- Avoid obvious terms: Don't use common words that directly describe your product or service.
- Build secondary meaning: If your mark is slightly descriptive, establish distinctiveness through extensive use, advertising, and consumer recognition.
3. Failure to Function as a Trademark
A mark must serve as a source identifier to be registrable. If it’s used in a way that consumers don’t recognize it as indicating the origin of the goods or services—such as with ornamental designs or informational phrases—it may be refused.
How to Avoid This Mistake:
- Use it prominently: Place your mark on packaging, labels, or tags for goods, or in advertising for services, so it stands out.
- Make it distinct: Ensure it’s separate from other text or designs and not buried in a sentence.
4. Specimen Issues
The specimen is proof of how you use your mark in commerce. For goods, it must show the mark on the product, packaging, or point-of-sale displays; for services, it should appear in advertising or promotional materials. Refusals occur when specimens are unacceptable, such as mock-ups or digitally altered images.
How to Avoid This Mistake:
- Follow USPTO guidelines: Review the rules for acceptable specimens carefully.
- Submit real examples: Provide clear photos of the mark on goods or screenshots of it in service-related materials.
- Match the application: Ensure the specimen aligns with the goods or services listed.
- Include details: For website specimens, provide the URL and access date.
5. Incorrect Identification of Goods or Services
The USPTO requires a specific and accurate description of the goods or services tied to your mark. Vague or overly broad identifications can lead to refusal.
How to Avoid This Mistake:
- Use the USPTO Manual: Refer to the Acceptable Identification of Goods and Services Manual for precise terms.
- Be specific: Clearly define the nature of your goods or services.
- List functions separately: If your product has multiple uses, detail each one.
A federal trademark registration offers significant benefits, including nationwide protection, the right to use the ® symbol, and the ability to pursue infringement cases in federal court. By avoiding these five common mistakes—likelihood of confusion, descriptiveness, failure to function, specimen issues, and incorrect identification—you can enhance your chances of approval. Take the time to research thoroughly, select a distinctive mark, use it correctly, provide proper specimens, and describe your goods or services accurately.