There Is “Likelihood Of Confusion”
A mark being confusingly similar to an existing mark is easily the most common reason for USPTO rejection.
This doesn’t just apply to logos or color themes – if you wanted to sell computers and had your own unique name, logo, and color scheme, but wanted to sell them under the name “Appl”, your mark will be rejected.
Let’s say you have a mark that is somewhat similar to an existing mark, but you think it’s distinctive enough to get a pass. In this case, you can take your chances with registration, but the odds still aren’t in your favor.
If at some point you are taken to court over it, you will have to prove your mark’s distinctiveness in the mind of the general public. This requires polls and surveys, which aren’t cheap – even if you win, you will still lose money.
One of the best ways of avoiding all of this is to hire a US trademark attorney who will help you conduct a comprehensive trademark search.
If your mark’s primary significance is a mere surname, don’t expect trademark registration.
This is opposed to last names, which have a good chance of trademark registration under certain circumstances – Stevens-Henager College, Ford, Albertsons, etc.
The Mark Is “Merely Descriptive” Or “Deceptively Misdescriptive”
On the one hand, we can have a mark that merely describes the function, characteristic, or quality of a product or service (for example: High Energy Soda or Comfy Pillows). Conversely, a mark can be deceptively misdescriptive – selling particle board bookshelves under the name Hard Wood Shelving, for instance. (This is, in other words, false advertising.)
There are times when a “merely descriptive” mark can achieve trademark registration status, but this is only after a secondary meaning has been acquired – that is to say, the public understands that the brand is unique and there is no confusion on the matter. American Airlines is a great example of a merely descriptive mark that has nevertheless been trademarked because it isn’t duping the public.
Mere ornamentation cannot be trademarked because common ornamentation must be available to competitors. For example, a floral pattern on silverware or tableware that is not distinctive enough to be immediately recognized by the public as the product of a specific company would not have a chance of registration with the USPTO.
The Mark Is “Scandalous, Disparaging, & Immoral”
One of the most famous examples of this is when the DC NFL football team The Redskins changed their name simply to Washington Football Team after their trademarked name was cancelled by the USPTO in 2014.
In this case, it was not a rejection as the mark had previously been approved; however, The Lanham Act gives the USPTO the right to cancel existing marks that have become scandalous, disparaging, or immoral over time.
It shouldn’t take too much explanation to define what can and cannot be trademarked when it comes to vulgar or disparaging marks – profanity, racial and ethnic slurs, and other things that are potentially too offensive are likely to be rejected by the USPTO.