Overcoming a 2(d) likelihood of confusion is difficult, but not impossible. This type of trademark office action refusal occurs when an application has been submitted to the USPTO and a previously registered trademark (or previously applied-for trademark) is too similar to the proposed trademark, according to the USPTO examining attorney.
The USPTO commonly issues 2(d) likelihood of confusion refusals and this is one of the ways that registered trademarks are enforced. Trademark registrations are granted on a first come, first served basis, thus the earlier you apply for a trademark, the less likely a similar mark will conflict with your application (about 1000 applications are filed every day).
There are several factors that the examining attorneys at the USPTO consider when determining whether or not a likelihood of confusion exists. The appearance, meaning, sound, relatedness of good or services, and overall commercial impression of the proposed trademark are all relevant factors. If a conflict exists in any of these areas an office action refusal may be issued. In some cases, the examining attorney may cite several conflicting registered trademarks in the same refusal.
In order to overcome a 2(d) refusal the trademark applicant (or applicant’s attorney) is permitted to submit arguments and evidence in favor of registration of the proposed mark. The overall purpose of the response will be to show that the marks are not similar and not likely to be confused in the minds of the ordinary consumer.
This can be achieved by a persuasive analysis of the office action, other relevant trademark registrations, and of course the Dupont factors. The Dupont factors stem from a commonly referred to trademark case dealing with the likelihood of confusion. These factors are:
- The similarity of the appearance, connotation, and commercial impression of the marks.
- The similarity of the nature of the goods.
- The similarity or dissimilarity of established, likely-to-continue trade channels.
- The conditions under which sales are made, i.e. impulse buying vs. sophisticated purchasing.
- The popularity of the prior mark.
- The number and nature of similar marks in use on similar goods, i.e. dilution.
- The nature and extent of any actual confusion.
- The length of time of concurrent use without evidence of actual confusion.
- The variety of goods on which a mark is or is not used.
- The market interface between the applicant and the owner of a prior mark.
- The extent to which an applicant has a right to exclude others from use of its mark
- The extent of potential confusion.
- Any other well-established facts probative of the effect of use.
A careful analysis of these factors will often times persuade a USPTO examining attorney to reconsider their initial refusal. In many cases, submitting extra evidence in favor of the proposed trademark can be very helpful in achieving a registration because the examiners assessment of the conflict is limited to the information contained in the application, which is not always enough to accurately appraise the use/proposed use of the potential mark.
If you’ve received a 2(d) likelihood of confusion office action refusal feel free to CONTACT US for a free consultation!