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They Got a Trademark Registration. Why Can’t I?

Business owners whose trademark application is refused registration often find examples of other businesses who were awarded federal registration in very similar circumstances. There is a general policy that the Trademark Office be consistent in its administration of the trademark system. This gives predictability to those searching and clearing proposed trademarks. However, this is mostly lip service. The Trademark Office Examiners and Appeals Board repeatedly state that each case is decided on its own merits and facts. They are not bound by other decisions made in other cases. Examples of other registered marks provide little probative value in their analysis. In a decision regarding an application for registration of LITTLE MERMAID as a mark, the Trademark Trial and Appeal Board wrote, “The bare fact that the USPTO allowed the marks in the referenced third-party registrations to register is of little persuasive value and does not dictate the result in this case.”

This means that trademark applicants cannot rely heavily on arguing other trademark registrations when responding to office actions or appealing a refusal. A substantive argument on other grounds must be included in the response for a reasonable chance of success. There is no harm in raising the argument, just don’t make it your strongest point.