Westchester Women's Bar Association

Overcoming a Likelihood of Confusion Refusal

A 2(d) likelihood of confusion refusal can be difficult to overcome, and many 2(d) refusals will not be overcome. See our web page entitled, Likelihood of Confusion Refusals - 2(d) Refusals for the thirteen-factor test used to analyze these matters. This page will focus on marks that may contain similar elements, but also incorporate additional matter.

An applicant should consult an experienced trademark attorney to determine if it is prudent to submit time and resources into attempting to overcome a likelihood of confusion refusal. In the alternative, filing a new application may be a better use of an applicant's time and financial resources. Many factors must be considered, but first an applicant must understand the rules that Examining Attorneys at the United States Patent & Trademark Office ("USPTO") adhere to when considering issuing a likelihood of confusion refusal. Likelihood of confusion is a legal determination based on the relevant facts of each case.

When trademarks contain common elements, the Examining Attorney will assess the entireties of the marks to determine if the overall commercial impression of one mark is different from the mark contained in the earlier filed application or registration. Likelihood of confusion may not be able to be avoided by merely adding or deleting additional terms depending on which terms are shared, and the types of goods and services identified in the application or registration. The Examining Attorney will first identify the dominant portion of each mark.

If the dominant part of the marks is the same, then likelihood of confusion may not be able to be avoided regardless of other differences in the marks. In a recent precedential case from the U.S. Court of Appeals for the Federal Circuit ("CAFC"), the court affirmed the Trademark Trial and Appeal Board's ("Board") refusal of registration, holding that the marks, DETROIT ATHLETIC CO. for sports apparel and DETROIT ATHLETIC CLUB, for clothing items would cause a likelihood of confusion. The additional terms, "Co." and "Club" merely describe the business form of the entity that owns the marks. Adding generic or descriptive terms generally will not obviate confusion of similar marks when the goods are related. In re Detroit Athletic Co., 128 USPQ2d 1047 (Fed Cir. 2018) [precedential].

A similar decision was rendered in In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257 (Fed. Cir. 2010) [precedential]. Here, the CAFC affirmed the Board's decision that the mark ML for personal care and skin products would likely be perceived as a shortened or abbreviated version of the registered mark ML MARK LEES (stylized) for skin care products. Generally, it is true that the more distinctive the shared term is between two marks, the more likely confusion will occur, especially if the additional matter is descriptive and fails to function as a source identifier. See Palm Bay Imps., v. Veuve Clicquot Ponsardin Maison Fondee En, 396 F.3d 1369, 73 USPQ 1689 (Fed. Cir. 2005). If one mark can be considered the shortened version of the other, it's unlikely that an applicant will be able to overcome a 2(d) likelihood of confusion refusal.

However, additions and deletions may be enough to obviate a likelihood of confusion if (1) the marks convey significantly different commercial impressions; OR (2) if the shared element of the marks is not likely to be perceived by consumers as distinguishing source because it is generic, descriptive, highly suggestive or diluted. See Citigroup Inc. v. Capital City Bank Group Inc., 637 F.3d 1344, 98 USPQ2d 1253 (Fed. Cir. 2011). See our blog post entitled, How To Overcome A 2(d) Likelihood of Confusion Refusal, for ten tips for responding to an Office Action once your application is refused.

See Safer Inc. v. OMS Invs., Inc., 94 USPQ 1031 (TTAB 2010) [precedential], where the Board held that the mark DEER-B-GON for deer repellant and the marks DEER AWAY and DEER AWAY PROFESSIONAL also for deer repellant, would not cause confusion because the shared term "Deer" is descriptive of both parties' goods, and would have no source identifying significance. Confusion is less likely, if marks share common descriptive language because it is often outweighed by the differences in the marks in the sounds, appearances, meanings and commercial impressions. Therefore, if two marks share terms that are not distinct and do not identify source, and those marks contain other elements then, the additional matter may be sufficient to avoid confusion. See Bass Pro Trademarks, L.L.C. v. Sportsman's Warehouse, Inc., 89 USPQ2d 1844 (TTAB 2008) [precedential]. If you have questions about likelihood of confusion, please do not hesitate to contact the firm for a courtesy consultation.

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