Westchester Women's Bar Association

Persuasive Evidence to Overcome a 2(d) Refusal

If after submitting your trademark application to the United States Patent & Trademark Office you receive a refusal based on a likelihood of confusion with a registered mark, you will need to submit a Response to the Office Action with arguments and evidence to overcome the refusal. Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973). For a list of the du Pont factors, see our web page entitled, Likelihood Of Confusion Refusals, 2(d) Refusals.

Even if the marks are identical you may be able to persuade the Examining Attorney that when balancing the du Pont factors, confusion between the sources of the marks is not likely. See In re Thor Tech, Inc., 113 USPQ2d 1546 (TTAB 2015) [precedential], where the Trademark Trial and Appeal Board (the “Board”) reversed a refusal finding that the identical marks TERRAIN for “recreational vehicles, namely, towable trailers” and “motor land vehicles, namely, trucks” would not cause confusion. The applicant in this matter set forth 50 sets of third-party registrations for the same or similar marks for cars, trucks and sports utility vehicles and for recreational vehicles, travel trailers or motor homes owned by different entities. This type of evidence is suggestive of the fact that business owners in this industry believe its goods are distinct enough that confusion will not result even with identical marks. This evidence also indicates that other Examining Attorneys did not find confusion likely and allowed the identical marks to coexist on the Trademark Register for these types of goods.

In the past, the Board has determined that this type of evidence is persuasive to overcome a likelihood of confusion refusal. See Keebler Company v. Associated Biscuits Limited, 207 USPQ 1034 (TTAB 1980), where the Board commented that so many sets of third-party registrations for closely similar marks for the goods of the applicant and the cited registration weighs against confusion. Moreover, it highlights a pattern and policy of the Trademark Office allowing coexistence between the applicant’s goods and the registrant’s goods with similar or identical marks. Thus, an applicant can argue that for purposes of the consistency of the Trademark Register, no confusion should be found between its mark and the mark in the cited registration.

Applicants should also review the evidence submitted by the Examining Attorney to support the 2(d) refusal to determine if the evidence is substantial and probative. See, Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1244-45, 73 USPQ2d 1350, 1356 (Fed. Cir. 2004). In In re Thor Tech, Inc., the Examining attorney introduced seven third-party registrations for goods including both trucks and trailers. However, five of the seven registrations listed trailers that were not recreational vehicles and towable trailers. Those five registrations were not considered probative evidence because of the differences in the vehicles. The Examining Attorney’s Internet evidence had similar problems wherein the website evidence did not focus on recreational trailers. Thus, it is critical that an applicant hold an Examining Attorney to its obligation of supporting the likelihood of confusion refusal with the type of evidence required under the law.

Often it is critical that an applicant seeking to overcome a 2(d) refusal, be able to prove that either the first or the second du Pont factor weighs heavily in favor of finding no confusion. Although an applicant should introduce evidence of any relevant du Pont factor, it is well settled law that the two key considerations are the similarities of the marks and the relatedness of the goods or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976); see also, In re i.am.symbolic, llc, 123 USPQ2d 1744 (Fed. Cir. 2017) [precedential]. Of course, other du Pont factors could be influential in this decision, but the similarities of the marks and the similarities of the goods and services often tip the scales. If you have received an Office Action containing a refusal to register your mark, please feel free to contact the firm for a courtesy consultation.

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