Introduction: What to Know About Trademark Refusals and TTAB Challenges
Our trademark law firm has handled a growing number oftrademark refusals and TTAB (Trademark Trial and Appeal Board) disputes for business clients before the United States Patent and Trademark Office (USPTO). Many of these matters involve Section 2(d) refusals, where the USPTO believes two marks are too similar.
But not all trademark refusals are based on likelihood ofconfusion. Some are based on whether the trademark is too descriptive or too generic. These are common challenges, especially for startups and online platforms. In this article, we explain how businesses can respond to these issues with real world TTAB case examples and strategies such as a Section 2(f) claim for acquired distinctiveness.
TTAB Case Example: When a Slogan Fails to Function as a Trademark
In Alpha Kappa Alpha Sorority v. Stroll to the Polls, Inc.,Opposition No. 91267937 (TTAB July 17, 2025), the Board denied registration of a phrase used in voter outreach campaigns. The trademark application covered clothing items, but the Board found that consumers would see the phrase as a message, not as a source identifier.
Even though the slogan appeared on the inside collar of the items, it was already widely used across websites, merchandise, and social media. The TTAB concluded that the phrase was informational and failed to function as a trademark.
Takeaway: If your mark looks like a common slogan or social message, andnot a brand name, it may face refusal under the “failure to function” doctrine.
TTAB Case Example: Descriptive but Registrable – “Ghostwritten Inc."
In In re Ghostwritten LLC, Serial No. 98199104 (TTAB July 11, 2025), the USPTO refused to register the term “Ghostwritten Inc.” for online publishing services. The Examining Attorney argued that ghostwriting is common in the industry and that the term merely describes the services.
However, the TTAB reversed the refusal. It found that the term was too vague and abstract to describe the services clearly. The applicant clarified that it does not offer ghostwriting services, and there was no direct link between the mark and the listed services.
Takeaway: A term may sound descriptive but still qualify forprotection if it is not an immediate and obvious description of the goods or services.
Our Client Case Study: Overcoming a 2(e) Refusal
We represented a client whose application for a coined termcombined with the word “live” was initially refused registration under Section 2(e)(1). The USPTO believed the mark described live, temporary sales events.
We responded by explaining that the client’s platform was apermanent, interactive e-commerce marketplace, not a short term pop-up shop. We submitted evidence showing that the mark was not in common use, cited similar approved trademarks, and documented the client’s significant marketing investment and brand recognition.
As a result, the USPTO withdrew the refusal.
Takeaway: With clear positioning and strong evidence, adescriptive mark can overcome a 2(e) refusal, even without needing a Section 2(f) claim.
What is Section 2(f) and How Can It Help Descriptive Trademarks
Section 2(f) of the Lanham Act allows a trademark that is“merely descriptive” to still be registered if it has acquired distinctiveness. This means consumers have come to associate the mark with a particular source through consistent use over time.
How to qualify for a Section 2(f) claim:
- Use the mark continuously for at least five years incommerce
- Show evidence of sales, advertising, publicity, and market recognition
- Provide supporting materials like consumer declarations, media coverage, or surveys
A Section 2(f) claim is often helpful for product names andbusiness brands that started off descriptive but have gained real recognition in the marketplace.
Tips for Choosing a Strong, Registrable Trademark
Avoiding descriptiveness and genericness is easier when youchoose your brand name carefully. Here are some guidelines for selecting a trademark that is likely to be approved by the USPTO:
- Do not use generic or literal words to describe your productor service
- Avoid common industry terms unless paired with something highly unique
- Consider invented or abstract terms that suggest, but do not describe, what you offer
- Use unexpected combinations or wordplay to increase distinctiveness
- Conduct a trademark clearance search before investing in a name
A distinctive name is not only easier to protect but alsomakes your brand stand out.
Summary:How to Navigate and Overcome Trademark Refusals
- Marks that convey general messages or slogans may fail to function as trademarks
- Descriptive marks may be registrable if they require interpretation or context
- Section 2(f) provides a path to registration for descriptive marks used consistently over time
- Strong evidence of brand use and recognition can help overcome a 2(e) refusal
- Choosing a creative, unique brand name from the start is the best long-term strategy
Our law firm advises clients on how to respond to OfficeActions, file appeals before the TTAB, and position their marks for success. If you’ve received a trademark refusal or are launching a new brand, we can help you protect it with legal clarity and business insight.
Our Principal Attorney
Silvia Xiaoyun Sun, Esq. has been recognized by Super Lawyers as a Rising Star in the New York Metro Area for five consecutive years (2021–2025), an honor awarded to 2.5% of attorneys in the region. She is also listed in Best Lawyers: Ones to Watch in America in 2025, recognizing the top 5% of emerging legal talent.
Sincerely yours,
Silvia Xiaoyun Sun, Esq.
Sun IP Law Office, PLLC
New York, New York
Copyright ©2025, Xiaoyun Sun
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