Common Office Action Refusals: Trademark Section 2(d) Likelihood of Confusion

One of the most common refusals to the registration of a trademark with the United States Patent and Trademark Office is a Section 2(d) refusal for likelihood of confusion with a prior registered mark.  The objection goes to the heart of trademark law, but it can be avoided or overcome with the right strategy for the situation.

A refusal for likelihood of confusion is based on the examining attorney's determination that the applicant's mark used in association with its range of goods and services so resembles a registered mark that consumers would be confused as to who is actually the source of the goods or services associated with the mark.  The factors in making this determination include: 

-The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.

-The relatedness of the goods or services as described in the application and registration(s).

-The similarity or dissimilarity of established, likely-to-continue trade channels.

-The conditions under which and buyers to whom sales are made, i.e., ôimpulseö vs. careful, sophisticated purchasing 

-The number and nature of similar marks in use on similar goods

-The existence of a valid consent agreement between the applicant and the owner of the previously registered mark

While all of the above factors are considered when making a 2(d) determination, the two most persuasive reasons go to the similarity of the marks in sight and sound, and a similarity of the goods of services.  There is no mechanical test for a 2(d) refusal, and each case is decided based on its unique circumstance.

Avoiding the Problem with Clearance Searches

The best practice in avoiding a 2(d) refusal is to follow the examining attorney's protocol for discovering conflicting marks to the best of your ability.  The examining attorney conducts a search of the USPTO's records on an internal system for marks that so resemble any registered mark or prior filed application.  

While the examining attorney's particular search strategy is made public, the internal system that the examining attorney uses is not.  The USPTO does have a search engine that allows the public to conduct searches, but it is easy to miss a conflicting mark because examining attorneys look at not only a similarity in sight, sound and streams of commerce, but also foreign equivalents, connotations, synonyms, natural expansions upon a stream of commerce and many other factors.  

The bottom line is that conducting a perfect search is very difficult, which is why an applicant looking to register a mark should contact an attorney to conduct a clearance search.  The attorney will do their best to emulate the examiner's protocol, and may even go a step further by ordering a clearance search from a professional service that performs an extremely meticulous clearance search.  An attorney is best suited to sift through the professional search results and make a determination of the risk each mark presents while being mindful of practical considerations.  

Overcoming a 2(d) Refusal

If you have received an Office action that cites a 2(d) refusal for likelihood of confusion, it is your right to present arguments to the USPTO that the refusal was incorrect.  The two most common arguments are that the marks are not confusingly similar, or that the mark has acquired distinctiveness in the marketplace such that consumers have a strong association between your mark and your services such that registration should be permitted.  Making these substantive arguments truly requires an experienced attorney who has argued numerous Office actions, understands the law, and can make the most persuasive argument possible while often utilizing extrinsic evidence.

Need a hand with performing a clearance search or responding to a 2(d) refusal for likelihood of confusion?  We are happy to help.  Call 650-271-9395, or email us at info@blgtrademarks.com.

Disclaimer: This article discusses general legal issues, but it does not constitute legal advice. No reader should act or refrain from acting on the basis of any information presented herein without seeking the advice of counsel in the relevant jurisdiction. Bend Law Group, PC expressly disclaims all liability in respect of any actions taken or not taken based on any contents of this article.