What to Do if Your Trademark Application is Rejected

A Practical Guide for Business Owners Facing a USPTO Refusal

After putting time and money into filing a trademark application, getting a rejection from the United States Patent and Trademark Office (USPTO) can feel like hitting a wall. If you're running a small business in New York, trying to build a brand in a crowded market, it stings. You’ve likely put your logo on packaging, built your website, and started gaining traction, and now the process seems to have stalled.

At Horn Wright, LLP, we help New York businesses respond to trademark rejections and find the clearest path forward. Whether you’re in Manhattan’s fast-moving startup scene or building a brand in Albany, our attorneys understand what’s at stake. We’re here to take the stress off your shoulders and guide you through your next move.

Understand Why the USPTO Rejected Your Application

The first step after a rejection is to understand exactly what the USPTO flagged. Every refusal comes with a letter called an Office Action, which spells out the legal reason they’ve turned down your trademark.

For many New York businesses, the reason ties back to one of two issues:

• “Likelihood of confusion” with an existing trademark
• Descriptiveness, meaning your mark describes a product or service too plainly

If you’re opening a small bakery in Buffalo and try to register “Empire State Cupcakes,” you may run into issues because the phrase includes a well-known geographic region. If there’s already an “Empire Cupcakes” in NYC, the USPTO might worry that customers could confuse the two.

Don’t skim the Office Action. It holds key information. Some refusals are fixable, and your next steps depend entirely on what the USPTO found.

Review the USPTO Office Action Carefully

Not every Office Action means your application is finished. In fact, most trademark refusals are considered “non-final.” That gives you a chance to respond with more information, adjust your filing, or argue your case.

You have six months from the date the Office Action is issued to file a response. Miss the deadline, and the USPTO will mark your application as abandoned, which means you’ll have to start over.

Read through the rejection line by line. Look closely at:

• The legal basis for the refusal
• Any required disclaimers (like disclaiming rights to the word “Pizza” in “Hudson Pizza Co.”)
• Additional documents, like cited trademarks or examples of conflicting marks

If the rejection looks complicated or includes several legal terms, that’s normal. Most business owners in New York don’t handle this alone. A qualified trademark attorney can help you figure out what’s fixable and what’s not.

Evaluate Your Trademark’s Original Filing

Once you’ve read the Office Action, take a hard look at what you originally filed. Sometimes the trademark just isn’t strong enough to register. Other times, it’s close but needs support.

New York is a dense trademark market. Between Long Island’s food scene, Rochester’s tech startups, and handmade goods out of the Catskills, names tend to overlap. If your name sounds too much like someone else’s, or if it simply describes what you sell, it may not qualify for protection.

Questions to ask:

• Is your mark unique, or does it blend in?
• Did you search existing trademarks before applying?
• Are there similar brands using your name in the same category?

If you run a bike shop in Albany and tried to register “Capital City Bikes,” the term may be too broad, especially with other cycling businesses across Upstate New York. Evaluating your trademark honestly helps you decide whether to fight the refusal or pivot to a better name.

Determine If You Can Respond or Need to Amend

Next, decide whether a response will fix the problem or if you need to revise your application entirely. In many cases, applicants can address the USPTO’s concerns by:

• Adding a disclaimer
• Clarifying how the mark is used
• Providing evidence that customers associate the name with your business

If you’re running a Queens-based e-commerce store and your brand name overlaps with a similar-sounding national mark, you may still be able to show that your product serves a different market. That type of clarification can change the outcome.

In other cases, a response won’t be enough, and it’s smarter to amend your application or start fresh. Either way, act before the six-month window closes.

Prepare and File a Timely Response

Your response matters just as much as your original application. If the USPTO issued a non-final refusal, you can use the Trademark Electronic Application System (TEAS) to file your reply.

A strong response does the following:

• Addresses each issue in the Office Action, clearly and factually
• Avoids legal jargon unless necessary
• Shows how your mark is distinctive and not misleading
• Includes any supporting evidence or clarifying documents

Missing the deadline, even by a day, will cost you the entire application. That’s not a risk worth taking. In a high-volume filing state like New York, where competition for names is tight, timing really matters. If you’re unsure how to format your reply or what to include, professional support can make a real difference.

Know When to File a Request for Reconsideration

If the USPTO refuses your mark again with a final refusal, you still have one option left before giving up: filing a Request for Reconsideration.

This gives you one more opportunity to present new facts or clarify your earlier response. If you missed something important the first time, like third-party usage that shows your mark isn’t too similar to others, this is your chance to bring it forward.

Businesses in New York’s growing wellness and creative industries, especially in places like Ithaca or Westchester County, often face unique challenges when branding products. If your name pushes boundaries or uses a coined term, reconsideration lets you explain why your brand still deserves protection.

This step must be taken quickly, typically within three months of the final refusal.

Consider Appealing to the Trademark Trial and Appeal Board (TTAB)

If your reconsideration doesn’t change the outcome, and you still believe your mark deserves to be registered, you can appeal to the Trademark Trial and Appeal Board (TTAB).

This is a formal administrative appeal process. There are no in-person hearings or courtrooms, but you will need to submit:

• A legal brief that outlines your argument
• Supporting evidence
• A clear explanation of why the USPTO’s refusal was incorrect

This route isn’t quick. TTAB appeals often take over a year to resolve. But if your business operates in a highly competitive field, like fashion in NYC or fintech in Brooklyn, long-term brand protection may be worth it.

Think Strategically Before Refiling

Not every rejection is worth fighting. If your trademark isn’t strong, or if it runs too close to a competitor’s, it might be smarter to pick a better name and refile from scratch.

A fresh filing gives you a clean slate. Before you do that, make sure to:

• Search both state and federal trademark databases
• Check for domain availability and social handles
• Run your potential mark by real customers or colleagues

In New York’s saturated business market, where name confusion can create instant problems, thinking ahead saves time and legal fees. If your original mark included a term like “Hudson,” “Empire,” or “Finger Lakes,” consider using something more distinct and unrelated to location.

Avoid These Costly Mistakes

Many New York entrepreneurs rush the trademark process and end up paying for it later. Here are mistakes to sidestep:

• Failing to read the Office Action in full
• Missing the six-month response window
• Filing a new application with the same weak mark
• Using a name that describes a product too literally
• Reapplying without checking for updated conflicts
• Trying to handle complex refusals without legal help

These errors weaken your position if a competitor challenges your use of the name.

Get Professional Guidance Before Your Next Move

Handling a trademark refusal can feel overwhelming. But with the right support, it doesn’t have to derail your entire brand strategy. A New York trademark attorney can explain what went wrong, help you prepare a solid response, or guide you through an appeal.

In a state as diverse and brand-heavy as New York, having someone on your side makes the process smoother. From regional businesses in Syracuse to boutique retailers in Brooklyn, strong trademarks support long-term growth.

Even if your first try didn’t succeed, the right guidance can help you secure your brand and move forward with confidence.

You Can Still Protect Your Brand: Let’s Talk About What Comes Next

At Horn Wright, LLP, we know how frustrating it feels to hit a wall with your trademark application. You're trying to build something real, and now it feels like you're stuck. Our attorneys are here to review your options, explain your next steps, and help you move forward. You're not alone in this process, and you don’t have to figure it out by yourself.

 Reach out to our team when you’re ready to take that next step.