Private Label Sellers & Rejected Trademark Applications – Generic Marks
When the United States Patent and Trademark Office (USPTO) says a trademark is generic in nature, it means that the trademark you are trying to get simply describes the product rather than the seller.
For example, if you are selling hockey pucks and name the product ‘Hockey Puck’. A much better choice would be to name the product ‘Straight Shooter’, which describes the seller and is removed from the product itself.
A “word mark” will not be approved if it simply describes the product. An example of this is Apple Computers. You could not get the word ‘apple’ as a trademark for the fruit; you cannot sell Apple apples; the government will not give you that as a trademark. On the other hand, Apple computers is not descriptive of the product itself, it’s removed and therefore got approved for a trademark.
If your trademark application is denied for being generic in nature, sellers can redraft their application. Think about what you can do to make your trademark name more memorable to the consumer. Get less descriptive; don’t name a hockey puck, Hockey Puck. You want to show distinction between the name and the product.
There are certain things that you can argue about consumers that will help to get the trademark pushed through. The USPTO wants to see that consumers hear the name ‘Straight Shooter’ and associate it directly to the seller.
To try and persuade the USPTO to grant a mark that is descriptive, argue that the consumers have expectations from your trademark that are unique. Consider providing the USPTO with reviews, testimonials or other proof that your branded products are branded, not simply generic.
Reviews not only drive traffic to your products and your sales, they can also help to push through your trademark application if it has been rejected by the USPTO because it shows customer recognition. An example would be if your ‘Straight Shooter’ hockey puck is recognized by hockey players as being a great product.
You can also use testimonials; anything that identifies or persuades the USPTO that yours is different from the others and therefore your trademark should be approved because on a visceral level, it shows the consumers the quality or the benefits of your product.
Investment into your brand and its place in the market are also persuasive arguments. Provide copies of promotional materials to show that your trademark describes both your product and you as a seller.
You can also show marketing efforts in commerce to help get your mark approved.
These are all things that can help you take a USPTO rejection, also known as an ‘Office Action’ and turn it into an approval.
You can also consider changing the classification of the goods you are selling. An example is ‘Hockey Puck’ would not be a good name for hockey pucks, but it would likely be good for a sports drink.
There are 25 different trademark classifications to choose from. If you change the classification of the goods, you might be able to get it approved, which may be faster than filing for a brand new trademark.