Top USPTO Trademark Application Mistakes

Here’s something that might surprise you: The rejection rate sits around 40%, nearly half of all applications. Filing a trademark application seems pretty straightforward at first, but then the United States Patent and Trademark Office (USPTO) sends you a rejection letter, and suddenly it’s not so simple anymore. Most business owners figure their application will go through without a hitch. Instead, they’re stuck dealing with unexpected problems that push back protection for months or force them to restart the whole process.

Choosing A Mark That’s Too Generic Or Descriptive

This is probably the biggest mistake we see. Business owners pick marks that simply describe what they sell, and the USPTO won’t register those. If you own a bakery and try to trademark “Fresh Bread Daily,” you’re going to get rejected. Why? Because those words just describe what you do. They don’t distinguish your business from anyone else’s.

Generic terms are even worse. You can’t claim exclusive rights to common industry words. A New Jersey trademark lawyer can review your proposed mark before filing and tell you whether it’ll pass muster. That conversation alone can save you months of headaches.

The strongest trademarks don’t describe anything. They’re invented words, creative mashups, or terms that have zero connection to what you actually sell. Think about the most successful brands you know. Most of them use marks that are either completely made up or totally arbitrary.

Failing To Conduct A Proper Search

Some people skip straight to filing without searching existing trademarks first. Bad idea. The USPTO will reject your application if it conflicts with marks already on file, even when those marks aren’t exact matches. Similarity matters. If your mark sounds like another one, looks similar, or conveys the same meaning, you’ve got a problem.

The basic USPTO database won’t catch everything. You also need to check:

• State trademark registrations
• Common law uses of similar marks
• Domain names and social media handles
• Industry directories

Selecting The Wrong Classification

The USPTO divides everything into 45 different classes for goods and services. Pick the wrong one or write a vague description, and you’re asking for trouble. Your identification needs to be specific and accurate. You can’t just write “retail services” and call it done. The examining attorney wants to know exactly what you’re selling and how you’re selling it. A New Jersey trademark lawyer knows these classifications inside and out. They’ll categorize your offerings correctly so you’re not going back and forth with the USPTO trying to fix it later.

Submitting Poor Quality Specimens

The USPTO doesn’t take your word for it when you say you’re using your mark. You need proof. This specimen has to show how consumers actually encounter your mark in the real world. Screenshots of your “About Us” page won’t work. Mock-ups don’t count either. Neither do digitally altered images that don’t represent actual use. For goods, you might submit photos of your product packaging or labels. For services, you’ll need evidence showing the mark in connection with advertising or offering those services. It’s got to be real, and it’s got to be current.

Missing Filing Deadlines

Once your application is in, the USPTO sets specific deadlines for responses. Miss one by a single day, and your application gets abandoned. You’ll lose your filing date and any priority that came with it. All that work, gone. The standard response window is six months. You can request extensions, but they cost extra, and you’ll need a legitimate reason. Track every deadline from the moment you file. Set reminders. Don’t let this be the thing that kills your application.

Ignoring Office Actions

When an examining attorney sends you an office action pointing out problems, you need to respond carefully. Generic responses won’t fix anything. Actually, rushed or poorly thought-out answers often make things worse.

Office actions usually require legal analysis and precise arguments. You’ve got to understand what the examiner’s actually concerned about and address those issues with proper evidence and legal reasoning. That’s what separates approvals from final rejections.

Your trademark protects your business identity. It stops competitors from riding on your reputation and confusing your customers. At COFFYLAW, we walk clients through every step of the application process. We catch these mistakes before they happen, which saves you money and gets your mark registered faster. Getting it right the first time isn’t just about avoiding rejections. It’s about protecting what you’ve built without unnecessary delays.