Partial refusal means that the Trademark Office issues a refusal decision for some of the goods or services items in a single application, while the remaining items pass preliminary approval. The document received is the Notice of Partial Refusal of Trademark; the approved portion and the refused portion each proceed through their own subsequent procedures without affecting each other.
How Partial Refusals Occur
The examiner compares the goods/services subclass by subclass. Common triggering situations:
- The application spans multiple similar subclasses, and only some subclasses are similar to the designated goods of the cited trademark;
- The sign is found to lack distinctiveness or to be deceptive for some items, while the remaining items are unaffected.
How to Handle a Partial Refusal Notice
- The approved portion: no action is required — it automatically proceeds to publication of preliminary approval, and registration is approved if no opposition is filed within the three-month publication period;
- The refused portion: a refusal review limited to the refused items may be filed within 15 days of receiving the notice; if the review is waived, that portion of the application is deemed withdrawn;
- Fees: the review official fee is still charged per class and does not vary with the number of refused items.
Decision Points
- Check whether the refused items are core items: if core goods are refused, a review is worth the investment; if marginal items are refused and the odds of success are low, you may let them go and secure the approved portion;
- Assess protection gaps in the approved portion: after the subclasses adjacent to the core items are refused, competitors may find room to register; where necessary, file a different mark to fill the gap in those subclasses;
- Partial refusal is not partial failure: the approved portion is still a valuable registered trademark — secure it first.
Common Misconceptions
- Assuming the entire application must be reviewed after a partial refusal — wrong; a decision is needed only for the refused items;
- Overlooking the 15-day deadline and losing rights in core items;
- Waiving the review without filing gap-filling applications, leaving protection blank spots.
If you are facing the issues above, you can first run a refusal review assessment on MyTMBee to confirm feasibility before deciding whether to file, avoiding wasted official fees from blind filings.