Verify the Right to Register  

Verify the right to register the mark under the USPTO (or state) rules and guidelines. Verifying that you have the right to register before you apply may avoid or reduce refusals & office actions, and can avoid investing time and good will in a name or use of a name that cannot be federally registered on the Principal Register. See Comparison of Principal Register and Supplemental Register.


The Right to Register a trademark is determined by the Trademark Act of 1946 and the USPTO Trademark Rules of Practice. An applicant must comply with all substantive and procedural requirements of the Trademark Act and Trademark Rules of Practice when applying to the USPTO for a trademark even if the entity or  he/she is not represented by an attorney.


Grounds For USPTO Trademark Refusal- Trademark Applicant Does Not Have the ‘Right to Register’ on the ground that:

(1) the applicant is not the owner of the mark (15 U.S.C. §1051; TMEP §1201);

(2) the subject matter for which registration is sought does not function as a mark (15 USC 1051, 15 USC 1052, 15 USC 1053, 15 USC 1127) because, for example, the proposed mark:

(a) is used solely as a trade name (TMEP §1202.01);

(b) is functional, i.e., consists of a utilitarian design feature of the goods or their packaging (15 U.S.C. §1052(e)(5); TMEP §§1202.02(a) et seq.);

(c) is a nondistinctive configuration of the goods or their packaging (TMEP §§1202.02(b) et seq.);

(d) is mere ornamentation (TMEP §§1202.03 et seq.);

(e) is the generic name for the goods or services (TMEP §§1209.01(c) et seq.); or

(f) is the title of a single creative work or the name of an author or performing artist (TMEP §§1202.08 and 1202.09 et seq.);

(3) the proposed mark comprises immoral or scandalous matter (15 USC 1052(a); TMEP §1203.01);

(4) the proposed mark is deceptive (15 USC 1052(a); TMEP §§1203.02 et seq.);

(5) the proposed mark comprises matter that may disparage or falsely suggest a connection with persons, institutions, beliefs, or national symbols, or bring them into contempt or disrepute (15 USC 1052(a); TMEP §§1203.03 et seq.);

(6) the proposed mark comprises the flag, coat of arms or other insignia of the United States or any State, municipality, or foreign nation (15 USC 1052(b); TMEP §1204);

(7) the applicant’s use of the mark is or would be unlawful because it is prohibited by statute (TMEP §§1205 et seq.);

(8) the proposed mark comprises a name, portrait or signature identifying a particular living individual without the individual’s written consent, or the name, portrait or signature of a deceased president of the United States during his widow’s life, without written consent of the widow (15 USC 1052(c); TMEP §§1206 et seq.);

(9) the proposed mark so resembles a previously registered mark as to be likely, when used with the applicant’s goods and/or services, to cause confusion or mistake, or to deceive (15 USC 1052(d); TMEP §§1207 et seq.);

(10) the proposed mark is merely descriptive or deceptively misdescriptive of the applicant’s goods and/or services (15 USC 1052(e)(1); TMEP §§1209 et seq.);

(11) the proposed mark is primarily geographically descriptive of the applicant’s goods and/or services (15 USC 1052(e)(2); TMEP §1210.01(a));

(12) the proposed mark is primarily geographically deceptively misdescriptive of the applicant’s goods and/or services (15 USC 1052(e)(3); TMEP §1210.01(b)); or

(13) the proposed mark is primarily merely a surname (15 USC 1052(e)(4); TMEP §§1211 et seq.).



“The United States Patent and Trademark Office (USPTO) reviews trademark applications for federal registration and determines whether an applicant meets the requirements for federal registration. [The USPTO does] NOT decide whether you have the right to use a mark (which differs from the right to register).” http://www.uspto.gov/web/offices/tac/doc/basic/jobofuspto.htm


When a USPTO trademark examiner determines the right to register a mark, abandoned trademarks are given no consideration but registrations and pending applications may be used as a basis to refuse a mark for a likelihood of confusion with a registered or pending mark. Regardless of the status of an application within the office, (even if there is no application or registation) an owner may still claim common law rights through an opposition or cancellation process. The trademark opposition process applies only to marks on the Principal Register.


Verifying the “Right to Register” is just one step in our Verification Process. See VerifyATrademark.com for our Five-Step Verification Process.


To Verify a potential trademark is strong, available to use, and ready to register, we do much more than a direct hit federal search. To maximize the commercial strength and minimize the weaknesses of a trademark, Not Just Patents recommends our service and our Five-Step Verification process:

1) Verify Inherent Strength,

2) Verify Right to Use,

3) Verify Right to Register,

 4) Verify the potential mark (as currently used) Functions As A Mark, and

5) Verify that the Goods and Services ID is both the correct and the maximum claim that are user can make and verify that the Goods and Services ID meets USPTO requirements before filing.


See Why Should I Have A Not Just Patents Trademark Attorney Answer My Office Action if you have already applied and been refused.



Business owners should be aware that the right to register is determined by  both the application and the mark, not just the mark being registered. Many trademark refusals can be overcome by correctly answering the office action and/or submitting a better specimen of use. See Function as a Mark for more information on marks and showing proper use of the mark in a trademark application and Acceptable Specimen for more information.


Not Just Patents ® Legal Services are available at great prices to help you get your registration right the first time or to answer your office action. Call us at 1-651-500-7590. See Why Should I Have A Trademark Attorney Answer My Office Action if you have already applied and been refused.



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Tie It Up

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Call 1-651-500-7590 or email WP@NJP.legal for Responses to Office Actions; File or Defend an Opposition or Cancellation; Trademark Searches and Applications; Send or Respond to Cease and Desist Letters.

For more information from Not Just Patents, see our other sites:      

Steps to a Patent    How to Patent An Invention

Should I Get A Trademark or Patent?

Trademark e Search    Strong Trademark     Enforcing Trade Names

Common Law Trademarks  Trademark Goodwill   Abandoned Trademarks

Patentability Evaluation

Chart of Patent vs. Trade Secret

Patent or Trademark Assignments

Trademark Disclaimers   Trademark Dilution     TSDR Status Descriptors

Oppose or Cancel? Examples of Disclaimers  Business Name Cease and Desist

Sample Patent, Trademark & Copyright Inventory Forms

Verify a Trademark  Be First To File    How to Trademark Search

Are You a Content Provider-How to Pick an ID  Specimens: webpages

How to Keep A Trade Secret

State & Federal Trade Secret Laws

Using Slogans (Taglines), Model Numbers as Trademarks

Which format? When Should I  Use Standard Characters?

Shop Rights  What is a Small or Micro Entity?

Patent Drawings

Opposition Pleadings    UDRP Elements    

Oppositions-The Underdog    Misc Changes to TTAB Rules 2017

How To Answer A Trademark Cease and Desist Letter

Converting Provisional to Nonprovisional Patent Application (or claiming benefit of)

Trademark Refusals    Does not Function as a Mark Refusals

How to Respond to Office Actions

What is a Compact Patent Prosecution?

Acceptable Specimen       Supplemental Register   $224 Statement of Use

How To Show Acquired Distinctiveness Under 2(f)

Patent search-New invention

Patent Search-Non-Obvious

Trademark Attorney for Overcoming Office Actions Functional Trademarks   How to Trademark     

What Does ‘Use in Commerce’ Mean?    

Grounds for Opposition & Cancellation     Cease and Desist Letter

Trademark Incontestability  TTAB Manual (TBMP)

Valid/Invalid Use of Trademarks     Trademark Searching

TTAB/TBMP Discovery Conferences & Stipulations

TBMP 113 Service of TTAB Documents  TBMP 309 Standing

Examples and General Rules for Likelihood of Confusion

USPTO Search Method for Likelihood of Confusion

Examples of Refusals for Likelihood of Confusion   DuPont Factors

What are Dead or Abandoned Trademarks?

 Can I Use An Abandoned Trademark?

Color as Trade Dress  3D Marks as Trade Dress  

Can I Abandon a Trademark During An Opposition?

Differences between TEAS and TEAS plus  

How do I Know If Someone Has Filed for An Extension of Time to Oppose?

Ornamental Refusal  Standard TTAB Protective Order

SCAM Letters Surname Refusal


What Does Published for Opposition Mean?

What to Discuss in the Discovery Conference

Descriptive Trademarks Trademark2e.com  

Likelihood of Confusion 2d

Acquired Distinctiveness  2(f) or 2(f) in part

Merely Descriptive Trademarks  

Merely Descriptive Refusals

ID of Goods and Services see also Headings (list) of International Trademark Classes

Register a Trademark-Step by Step  

Protect Business Goodwill Extension of Time to Oppose

Geographically Descriptive or Deceptive

Change of Address with the TTAB using ESTTA

Likelihood of confusion-Circuit Court tests

Pseudo Marks    How to Reply to Cease and Desist Letter

Not Just Patents Often Represents the Underdog

 Overcome Merely Descriptive Refusal   Overcome Likelihood Confusion

Protecting Trademark Rights (Common Law)

Steps in a Trademark Opposition Process   

Section 2(d) Refusals   FilingforTrademark.com

Zombie Trademark  

What is the Difference between Principal & Supplemental Register?

Typical Brand Name Refusals  What is a Family of Marks? What If Someone Files An Opposition Against My Trademark?

How to Respond Office Actions  

DIY Overcoming Descriptive Refusals

Trademark Steps Trademark Registration Answers TESS  

Trademark Searching Using TESS  Trademark Search Tips

Trademark Clearance Search   DIY Trademark Strategies

Published for Opposition     What is Discoverable in a TTAB Proceeding?

Counterclaims and Affirmative Defenses


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