Overcoming Likelihood of Confusion Refusals

Once a trademark application is submitted to the United States Patent & Trademark Office (USPTO), it typically takes approximately 14-16 weeks for an Examining Attorney to be assigned to the application. Once the matter is assigned to an Examiner, an Office Action may issue. See our firm page entitled, Office Actions for more information on this topic. Likelihood of Confusion refusals (also referred to as Section 2(d) Refusals) are common in the prosecution of trademark applications. Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d) is the statutory basis for this type of refusal, hence the nickname 2(d) Refusals. This statutory basis applies to trademarks on both the Principal Register and the Supplemental Register. The best strategy to avoid this type of Refusal is to conduct a full U.S. trademark clearance search prior to filing your trademark application. A trademark clearance search will provide data for both the state and federal trademark registers and for use of trademarks in commerce that are not registered.

Despite conducting trademark clearance searches, an Applicant may still receive an Office Action on the grounds of likelihood of confusion with either a prior registration or pending trademark application. The Examining Attorney will furnish copies of the cited registrations or pending applications. As a matter of practice, it is always prudent to check the dates of expiration and confirm that the cited registration is still valid. For example, if a Declaration of Use or Renewal is due within the immediate future, you want to ensure the registration is maintained. Since documents filed with the USPTO are public records, you can check this fact yourself at www.uspto.gov. This rules applies as well to pending applications. For example, if the trademark application has been issued a Notice of Allowance you want to ensure that the applicant files an acceptable Statement of Use and specimen.

Once the status of the cited application or cited registration is confirmed, the Applicant will submit arguments to distinguish its mark from the cited registration or cited application. This will include attempting to point out differences in the two trademarks. The Applicant should review the cited mark and its own mark for dissimilarities in appearance, sound, connotation and commercial impression. See our firm page entitled, Similarities In Trademarks for more information on how similarities between trademarks are evaluated.

The general rule is that similarity in any one of these elements may be sufficient to find the marks are confusingly similar. Examiners commonly cite the rule that consumers will often focus more on the first term of the mark for source identification, thereby rendering it the dominant portion of the mark. Often more weight is given to the dominant feature of the mark in a likelihood of confusion analysis. Also, adding a term to a registered trademark generally does not obviate the similarity between the marks nor will it overcome a likelihood of confusion. Moreover, modifying a mark that results in a visual change in appearance, but does not change the sound of the mark typically will not be effective because trademarks that sound the same will be considered legally identical and phonetic equivalents (for example quick and kwik).

Regarding the relatedness of the goods and services, a determination is made based on the identification of the goods and services in either the application or registration. The only way limitations may be imposed on the trade channels is if the identification of the goods or services specifically defines and limits the distribution of the goods or the classes of consumers. Without such limitation, the Examining Attorney or Board will assume that the channels of trade for the goods or services are those typical for those goods and services.

If the Examiner presents third party registrations to show the subject goods and services are of a type that emanate from the same source, we can perform statistical analysis that may show that the Examiner's evidence only demonstrates an overlap in source that is de minimis. This is an effective method to overcome a likelihood of confusion refusal that is based on relatedness of the goods and services. Also, if the Examiner attempts to argue the goods are related simply because they are sold in the same large store (i.e. a department store), we are well aware of the arguments necessary to overcome such an assertion. In addition, an assertion that both goods and services are traded on the Internet is insufficient to demonstrate the goods and services are related. We are experienced at overcoming Examiner Refusals and if you need assistance with your Office Action, kindly contact us for a courtesy consultation.