Common Reasons Trademark Registrations Get Denied

New York Trademark Rejections: Top Filing Pitfalls

After you’ve put in the work to build a brand, getting denied for a trademark can feel like a punch to the gut. You may have a logo, a catchy name, and big plans, but one mistake can stop your registration cold. In New York State, where the business landscape moves fast, especially in places like Manhattan or Buffalo, you can’t afford to make a wrong turn when it comes to legal protections.

At Horn Wright, LLP, we help businesses across New York secure trademarks that hold up. Our attorneys know how to identify potential pitfalls early, guide filings carefully, and respond if the United States Patent and Trademark Office (USPTO) pushes back. Whether you run a storefront in Rochester or a tech startup in Albany, our trademark lawyers are here to help you protect your brand the right way.

Filing Incomplete or Inaccurate Applications

Many trademark applications fail right out of the gate because they’re missing something. This might sound simple, but the USPTO expects precision. A single misstep in your application, like listing the wrong owner or providing a vague product description, can lead to immediate rejection.

In New York, these errors often come from business owners rushing to file without reviewing their documents or misunderstanding what the USPTO needs. If you’re registering a trademark for a restaurant in Queens, for instance, but you forget to attach the proper specimen, the examiner won’t wait for you to figure it out later.

What we see most often in New York State:

• Misidentifying the legal entity (especially with LLCs registered through the NYS Division of Corporations)
• Filing under an individual’s name instead of the company’s
• Leaving out class-specific product or service details

When your filing contains gaps or errors, the USPTO won’t hesitate to issue an Office Action or deny your application.

Choosing a Generic or Descriptive Mark

If your trademark just tells people what you sell, you’re going to run into trouble. The USPTO wants distinctiveness. That means your mark needs to stand out, not just describe your goods.

This becomes a big issue in crowded markets like New York City, where businesses compete with similar names and concepts. Say someone opens a bagel shop in Brooklyn and tries to trademark “Hot Fresh Bagels,” that name doesn’t identify a unique source. It simply describes the product.

The same applies to:

• Legal service names like “Fast Divorce Help NYC”
• Food trucks named “Best Tacos Albany”
• Clothing brands using “Affordable Streetwear NY”

Descriptive terms can only get trademark protection if they’ve gained a strong secondary meaning over time. That takes years and consistent public recognition, something most new businesses don’t yet have.

Conflicts With Existing Trademarks

One of the top reasons trademarks get denied in New York is that they’re too close to something already on file. This kind of conflict, called a “likelihood of confusion,” looks at how similar two marks are and whether they serve similar markets.

Let’s say a bakery in Syracuse tries to register the name “Sweet Crumbs,” but a company in New Jersey already holds “Sweet Crumb” for baked goods. Even though they’re in different states, the services and names are similar enough that consumers could mix them up. That alone can tank the application.

The USPTO compares:

• How the marks look, sound, and feel
• Whether the goods or services fall into the same category
• The commercial impression each mark gives

In New York, with thousands of businesses packed into close quarters, especially in cities like Yonkers or White Plains, trademark conflicts show up often.

Failing to Show Lawful Use in Commerce

Just saying you plan to use a trademark isn’t enough. You have to prove you’re already using it in real business activities. The USPTO wants to see actual use, evidence that you’ve sold or advertised your product or service under that name.

In New York, this comes up a lot with online sellers and service-based businesses. For example, if someone in Rochester claims they’re using a brand name but can’t produce a website, invoice, or packaging photo showing it in use, their application could get refused.

You’ll need:

• A clear specimen (like a product label or service flyer)
• Proof that the mark appears where customers interact with the brand

If your specimen doesn’t match your application or seems fake, the USPTO won’t move forward. You can avoid issues by learning how to properly show trademark use with the right evidence. 

Using Geographically Descriptive Marks

Including a city, region, or place name in your trademark sounds like smart branding. It often works against you. The USPTO often denies trademarks that use geographic names unless the applicant proves the name means more than just the location.

In New York, this shows up in marks like:

• “Adirondack Outfitters” for outdoor gear
• “Hudson Valley Honey” for local beekeepers
• “Long Island Logistics” for a shipping company

These names tell buyers where the goods or services come from, but not who offers them. The USPTO usually treats those as descriptive and denies them unless the business can show the name has built a distinct identity.

This is especially tricky in New York, where place-based branding carries weight but doesn’t guarantee protection.

Including Surnames Without Distinctiveness

If your trademark includes a last name, you may face a denial unless that name carries a reputation that clearly links it to your business. In New York, with its dense population and high business volume, surname-based trademarks frequently overlap.

Names like “Martinez Consulting” or “O’Brien Builders” may look unique to you, but someone else may have already filed something similar. Unless your brand has built recognition over time, the USPTO may treat the mark as too generic.

The bar is even higher when the surname is common. You’ll need to prove that customers associate your name with your product or service, not just your family. 

Submitting a Confusing or Misleading Mark

Trademarks can’t confuse consumers about what you sell, where it comes from, or who backs it. If your mark hints at a false relationship with a public agency, well-known institution, or other business, it’s likely to get rejected.

Some common New York missteps:

• Suggesting ties to state or city agencies (like “Empire State Compliance Group”)
• Implying a university connection (such as “Columbia Legal Advisors” without affiliation)
• Referencing large, unrelated brands (like “Apple Realty” in Buffalo)

The USPTO looks hard at anything that could mislead the public. A reasonable person could misunderstand your mark’s origin, and the USPTO may issue a denial. 

Ignoring State-Level Conflicts and Registrations

Federal registration isn’t the only thing that matters. Many New York businesses forget that the state maintains its own trademark registry. If someone else already claimed your mark within New York, you could face legal trouble even if your federal application succeeds.

State-level conflicts can:

• Trigger cease-and-desist letters
• Block your ability to expand in key markets like NYC or Albany
• Undermine your legal position in disputes

Before you file federally, it’s smart to check the New York Department of State’s trademark records. That quick step can prevent serious headaches later.

Submitting Non-Trademarkable Material

Some things just don’t qualify for trademark protection. In New York, many businesses, especially in retail or personal branding, try to claim rights to things that the USPTO won’t recognize.

This includes:

• Inspirational slogans like “Grind Now Shine Later”
• Religious phrases like “Blessed Beyond Measure”
• Decorative statements used on T-shirts, mugs, or signs

If the phrase doesn’t indicate the source of goods or services and instead just expresses an idea, it likely won’t qualify. The USPTO sees this often in merchandise-heavy areas like SoHo or Buffalo’s Elmwood Village.

Missing USPTO Deadlines or Response Windows

Even a solid trademark application can fall apart if you miss a key deadline. Once the USPTO sends an Office Action, you usually have six months to respond. That clock doesn’t pause.

In fast-paced markets like New York, business owners juggle a lot. Between inventory, staffing, and day-to-day operations, it’s easy to miss a letter or forget to reply. But if you don’t respond in time, your application will go abandoned.

Tips for staying on track:

• Set calendar alerts for every USPTO communication
• Use a trademark attorney to track deadlines for you
• Double-check your email and mailing address on file

Deadlines don’t reset just because you’re busy. Staying organized makes all the difference.

Get Local Trademark Insight Before You File

Trademarks protect your brand, but the process isn’t easy, especially in a fast-moving, high-volume place like New York State. From Brooklyn startups to Ithaca craft producers, one overlooked detail can delay or derail the entire process. Knowing what trips people up and preparing for it can save you months of stress.

Horn Wright, LLP, helps New York businesses secure trademark protection that actually sticks. We work with clients at every stage to file cleanly, respond promptly, and avoid denials before they happen. If you’re ready to move forward, contact us today to take the next step.