Likelihood of Confusion Refusals – 2(d) Refusals

There are multiple reasons why an Examining Attorney may refuse a trademark application. The rules governing substantive examinations of trademark applications are found in the Trademark Manual of Examining Procedure (TMEP). One of the more common reasons for refusal is the applicant’s mark when used in connection with the goods and/or services identified in the trademark application, resembles a registered mark and is therefore likely to cause confusion in the marketplace. You can find additional information on this point in the TMEP in §1207 and in the sections that follow. These types of refusals (also referred to as Section 2(d) refusals) require significant skill of an experienced trademark attorney to overcome the objection.

It should be noted that the Examining Attorney conducts a search of the USPTO records during a trademark prosecution, but does not search common law rights (unregistered rights). Therefore, dates of first use are not relevant to the Examining Attorney’s search. If an applicant wants to challenge prior rights in a mark, the applicant must initiate an inter partes proceeding with the Trademark Trial and Appeal Board. Another important note is that an applicant must ensure that all probative facts are in evidence before an Examiner makes a final determination on the issue of likelihood of confusion. In the seminal case of In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973), the Court set forth a group of factors relevant to a determination of likelihood of confusion. These factors include:

(1) The degree of similarity between the marks including visual appearance, sound, connotation, commercial impression, and meaning;

(2) Relatedness of the goods or services (as described in the trademark application);

(3) Similarities in established trade channels;

(4) The sophistication of the consumers;

(5) The fame of the trademark (amount of sales, amount spent on advertising, length of use of the mark, etc.);

(6) The number and nature of similar marks in use in commerce on similar goods or in connection with similar services;

(7) Evidence of actual confusion;

(8) Evidence of concurrent use without evidence of actual confusion;

(9) Whether the trademark is used on a variety of goods or only used on a single product (family of marks or house mark);

(10) The market interface between the applicant and the owner of the prior mark;

(11) The extent to which applicant has a right to exclude others from use of its mark;

(12) The extent of potential confusion, minor or substantial; and

(13) Any other established fact probative of the trademark’s use in commerce.

In any likelihood of confusion analysis, the two most critical factors are the similarities between the marks and the similarities between the goods and services. There are multiple rules to guide a practitioner when comparing trademarks. For example, the marks are to be compared in their entireties and must be considered in conjunction with the goods or services identified in the trademark application. Another important rule is that when assessing similarities in trademarks, the more similar the marks at issue, the less similar the goods and services need to be to find a likelihood of confusion and vice versa. The weight given to each relevant du Pont factor will vary from case to case. As for the goods and services, they need not be identical or even competitive, to support a finding of likelihood of confusion. It is sufficient if the goods and services are related in some manner or if the circumstances surrounding their marketing are such that the same persons will see the marks and form a mistaken belief that the applicant and the registrants’ goods and/or services are from the same source or that the parties are affiliated or connected in some manner.

Depending on the type of trademark, different analytical approaches will be implemented. For example, if the mark consists of multiple terms, then the Examining Attorney will decide whether a portion of the mark is dominant in regard to creating a commercial impression. In another case, if it is determined that the trademark is descriptive or weak (compared to a coined term or a distinctive mark), it may be entitled to a narrow scope of protection. Yet in the case of design marks, the comparison must focus on the visual similarities. Each likelihood of confusion analysis will vary depending on the facts of each case.

At the Law Offices of Joseph C. Messina, the attorneys are experienced in trademark prosecutions and want to use their knowledge to assist you with your trademark filing at the United States Patent & Trademark Office.

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