This is a complex issue that may be difficult to overcome.  Because this is the case – while you have the option to file a response yourself, we recommend contacting us and speaking to one of our experienced attorneys – which include form USPTO examiners with decades of experience.  To learn more, please continue reading below.

A “Section 2(d)” or “Likelihood of Confusion” refusal will issue if the Examining Attorney feels that there is a likelihood of confusion with a prior-filed trademark registration. Two marks do not need to be identical in order to cause a likelihood of confusion, nor do they need to be used in connection with identical products or services. If the marks are too similar and are being used in connection with related products or services, the Examiner may find a likelihood of confusion. The inquiry is therefore highly subjective and reasonable minds often will differ about whether two marks are confusingly similar.

In order to overcome a Section 2(d) Office Action, you need to submit a defense of your mark that analyzes all of the relevant likelihood of confusion factors as they apply to the marks at issue.  The issue is not whether the two (or sometimes more) marks or the goods or services offered are likely to be confused but, instead, whether there is a likelihood of confusion as to the source or origin of the goods or services because of the marks used on or in connection with the goods. The degree of how related makes are in this context is viewed in light of all the factors under a case called In re E. I. du Pont de Nemours & Co.  Courts have looked at these factors in different ways and this allows a creative attorney who is experienced and familiar with a host of different case law to make the right argument as to why registration should be allowed.

Two very important points with respect to the duPont factors: First, not all of the factors are relevant in every case, and second any one of the factors may control a particular case.  The two main factors – that apply in every case are:

  1. The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression, and
  2. The relatedness of the goods or services as described in the application and registration(s).

The other factors that might be relevant are:

  1. The similarity or dissimilarity of established, likely-to-continue trade channels.
  2. The conditions under which and buyers to whom sales are made, i.e., “impulse” vs. careful, sophisticated purchasing.
  3. The number and nature of similar marks in use on similar goods.
  4. The existence of a valid consent agreement between the applicant and the owner of the previously registered mark.

There are other strategies as well.  If you would like an analysis of your likelihood of confusion rejection by the USPTO, click this link to schedule a call or request a written analysis.  Our attorneys include former USPTO trademark examiners with decades of trademark experience.

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