If you’re a naming specialist, entrepreneur, or brand manager who has had great names shot down by the U.S. Patent and Trademark Office (USPTO) for seemingly perplexing reasons, you’re not alone. Lately, the USPTO seems to be taking a far more conservative stance – handing out refusals for company, product, and service names that, just a few years ago, would’ve made it through.
The Insatiable Trademark Beast
On October 3rd, 2025, River + Wolf had the pleasure of attending The Business of Naming Conference in Berkeley, California; a first-of-its-kind event co-produced by the wonderful Caitlin Barrett and Nina Beckhardt.
The gathering united some of the brightest minds in naming, strategy, and linguistics for a full day of inspiring talks and lively discussions about the creative forces shaping our field.
The day also featured a powerhouse legal panel that offered a behind-the-scenes look at how the U.S. Patent and Trademark Office (USPTO) is currently evaluating brand names.
One of the panelists, Angela Wilcox, Managing Partner at Wilcox IP, responded to a question that clearly hit home with the audience:
“Why does it seem like the USPTO is rejecting everything with the same name – even when there’s a clear distinction between the goods or services?”
Before sharing Angela’s response and her suggested workarounds – a bit of background for those readers who might not be familiar with Section 2 (d) of the Lanham Act.
The Legal Ground Rule: Section 2(d) of the Lanham Act
All U.S. trademark applications hinge on one key principle: Section 2(d) of the Lanham Act, which empowers the USPTO to refuse registration if a mark is “likely to cause confusion” with an existing one.
That phrase – “likely to cause confusion” – is the heartbeat of trademark law. Confusion can arise in many ways: when marks sound alike, share similar letter sequences, or evoke the same, or closely-related, ideas or imagery.
But similarity alone isn’t enough to doom a mark. Two identical or nearly identical names can coexist peacefully if their goods or services live in completely different worlds.
Think Delta Air Lines and Delta Faucet, Ace Hardware and ACE bandages, Dove ice cream bars and Dove personal care products. The USPTO doesn’t just compare words – it compares markets.
More to Consider
Beyond this, there is additional criteria that helps examiners determine whether or not products, companies, or services are confusingly similar. These include, but are not limited to:
- – Whether the goods or services are complementary or used together
– Whether they move through the same trade channels
– Whether they target the same consumers
– The strength or fame of the existing mark
– The sophistication of the buyer
– Any evidence of actual confusion
While the law itself hasn’t changed, Angela and her fellow panelists, Trevor A Caudle and Irina Lyapis, noted that in recent years, USPTO examiners (the attorneys reviewing applications) have taken a more conservative view of “relatedness.” Increasingly, they’re flagging identical names even when the goods or services have little obvious overlap.
As Angela explained, a dog-bootie brand and a home décor label might once have occupied entirely different worlds – and in the pre-digital era, they usually did. But today, both can appear side by side in the same online marketplace or lifestyle feed, blurring the boundaries between categories that once felt distinct.
Why the USPTO Seems Stricter
E-commerce is only part of the story: products that were once separated by brick and mortar spaces, now coexist on the same digital shelves, or flow through the same feeds. Along with this, other factors may also be contributing to this more cautious approach. To mention a few:
- 1. Stricter Examination Practices: Examiners are facing greater pressure for consistency, leading to more conservative calls in borderline cases.
2. Brand Extension Assumptions: Modern brands stretch across categories – sneaker companies launch fragrances, tech firms make luggage – so examiners assume consumers expect cross-category overlap.
3. Powerhouse Brands & Expanded Protection: Giants like Nike and Apple already enjoy broad protection, but the digital era amplifies their reach – blocking marks that once might have cleared.
Needles and Hammers
The good news? We tend to hear more about surprising refusals than the thousands of smooth approvals that happen quietly every year. This “visibility bias” can make the USPTO seem harsher than it truly is.
But even if the rise in refusals for identical names across unrelated categories is somewhat exaggerated, a smart filing strategy – what Angela called, “using a needle rather than a hammer” – is still wise. In other words, be specific: instead of broadly claiming “retail services,” say “online retail services featuring booties for small dogs”.
The more precisely and more narrowly you define your goods or services, the less likely you are to overlap with existing marks.
But precision is just one piece of a strong trademark strategy. Beyond crafting expert descriptions, an IP attorney can take several other steps that often make the difference between a successful registration and a failed one. These include:
- – Running a deep clearance search: Go beyond Google and the USPTO’s database. Look for phonetic equivalents, misspellings, and common-law uses.
– Building your case: Highlight differences in markets, pricing, and audiences when responding to refusals.
Adding distinction: Register the name with logos or taglines that can make your mark more distinct.
– Filing smartly: Select the right classes and, as mentioned, avoid overly broad claims. If possible, lock up a new brand name with an existing company name.
– Monitoring early: Set up watch services and resolve conflicts proactively.
– Staying the course: A refusal isn’t final – solid reasoning and persistence often overcome an examiner’s refusal.
These tactics can dramatically improve your odds of achieving a strong, defensible mark.
Bottom Line: The Rules Haven’t Changed – But The Game Has
The USPTO hasn’t rewritten trademark law – but it may be upholding and enforcing its current rules more stringently than before. For entrepreneurs, brand creators, and naming professionals, that means one thing; a name can’t just be inspiring – it has to be carefully built and strategically filed to endure.
DIY is fine for many things – but preparing and filing your mark isn’t one of them. With an expert IP counsel by your side, you can keep the trademark beast from blocking your way to a successful registration. And even better, dull his ravenous appetite.
