Can you request a USPTO refund if your trademark application is refused?

Trademark Law0 comments

The short answer is no.

You can’t request the United States Patent and Trademark Office (USPTO) refund your fees if your trademark application isn’t successful. 

There’s actually a big ol’ warning on their website when you go to pay the fees. It reads:

Once you submit this application, we will not cancel the filing or refund the fee. The fee is a processing fee, which we do not refund even if we cannot issue a registration after our substantive review. This is true regardless of how soon after submission you might attempt to request cancellation of the filing. Therefore, please review ALL information carefully prior to submission.

In other words…

No takesies-backsies when it comes to your trademark registration fees.

Which is why you want to be really sure you’ve filed your application correctly.

Because your trademark is never guaranteed registration and (as we’ve just learned) there are no USPTO refunds available once you start the application process.

So what can you do?

Make sure your application has the best chance at success possible by educating yourself on the process.

**Just before we dive in: this post is legal education and information, not business, financial, or legal advice, and it doesn’t create an attorney-client relationship between us. 

This is also an attorney communication under Rule 7.2 of the Rules of Professional Conduct of the State Bar of California and Business and Professions Code Sections 6157-6159.2.

Please chat with an attorney in your area to make sure you’re protecting your business.**

Avoiding the reasons for trademark registration refusal

The sad truth is that nearly half (48.3%) of all trademark applications filed with the USPTO will be rejected.

In fact, the U.S. has the lowest success rate for successful trademark registration worldwide.

Ouch.

Some of the most common reasons a trademark registration will be refused include:

  1. You’ve created a likelihood of confusion with an existing registered trademark (or a mark with a pending application).
  1. Your mark is too descriptive.
  1. Your mark fails to function as a trademark – it consists of common terms or phrases consumers are unlikely to perceive as a brand identifier.

The best thing you can do is understand why trademarks are refused and take preventative measures.

Understanding the trademark application process before you file

Besides running a thorough trademark search to avoid your mark coming up against a claim of “likelihood of confusion,” there are a lot of things to consider about the trademark application process.

Choosing to register words and/or design

One of the first considerations includes whether you’ll apply to register your words or a combination of words and design.

If you register as a word mark, you’re simply registering the text. Which means those words are protected no matter what they look like.

If you register as a design mark, your mark is only protected when it’s presented in the same format as it was when you applied for registration.

You’ll have to decide which option is best for your brand.

Choosing from an in use or intent to use application

Another choice you’ll need to make is whether you should file your application as an in use or intent to use your trademark.

An in use application can be filed when you’re actively using your trademark in commerce (for goods and services).

You’d choose this option if you’re already committed. 

(Hopefully, you conducted a knockout search and had an attorney run a comprehensive trademark search well before you committed, though.)

An intent to use application can be filed if you haven’t actually started using your mark yet, but you plan to in the future and want to “reserve” the mark for yourself.

Filing an intent to use application is more work, but it’s the right move if you’re serious about protecting your mark(s).

Choosing your international classes for your trademark application

International classes help distinguish your trademark usage and make it easier to spot potential infringement.

Most marks will fall into multiple categories, so it’s important to choose the right ones.

If you fail to choose the right international class(es), your trademark might not be completely protected – even if you do reach registered status.

Saving on fees in other ways

There’s no doubt that filing a trademark application can be overwhelming, time-consuming, and expensive.

And while it would be nice if you could get that USPTO refund for trademark applications that don’t make it to registration, we know that’s not possible.

Sometimes, business owners find other ways to save on fees.

Like using an online trademark service that gives you a discounted price.

The problem?

You’re still doing all the legwork yourself – including choosing classes, drafting goods and services descriptions, and selecting specimens – without much (or any) oversight or input from the service provider.

Plus, there are no refunds from those online services when things go sideways, either.

Your best bet to avoid the headaches and hassles of trademark registration refusal in the first place is to work with a trademark attorney.

They’ll run a comprehensive search and help you make all the tough choices outlined here.

Your trademark attorney will even help you respond to – and potentially work through – a USPTO refusal.

Apply to work with Nicole Cheri Oden Law, and let’s set your application up for success. (Since we know there are no USPTO refunds available.)

 

Want to keep Uncomplicating Trademarks for yourself?

Get on the exclusive podcast list and start listening today.

 

I’m Nicole.

I understand both the legal world and the online business world and can bridge the gap for entrepreneurs that want to ensure all of their ducks are in a nice, neat row. Let’s protect your business so you can build your empire.

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