How to Respond to a Likelihood of Confusion Refusal

A likelihood of confusion refusal means the examining attorney found an earlier registration or application that, in the examiner’s view, is similar enough to your mark for related enough goods that consumers would be confused. It is issued under Section 2(d) of the Lanham Act, it is the most common substantive refusal the USPTO issues, and it is frequently withdrawn after a well-built response. The word that matters is built. CLP’s USPTO office action response team treats a 2(d) response as an evidentiary filing, because an argument that the marks are different, standing alone, almost never persuades an examiner who has already concluded otherwise.

Read the likelihood of confusion refusal before you argue it

The office action identifies the cited mark by registration or serial number, quotes the goods and services it covers and explains which du Pont factors the examiner relied on. Start there. If the citation is a pending application rather than a registration, the examiner will suspend your application until the earlier one registers or dies, and your response strategy may be to wait and watch rather than argue. If the cited registration is old, check whether its owner still exists and still uses the mark. If the refusal rests on an identification of goods in your own application that is broader than your business, the fix may be a narrowing amendment rather than a brief.

Also note every other refusal and requirement in the action. A response that overcomes the 2(d) refusal and ignores the disclaimer requirement is incomplete, and the deadline described in our post on the trademark office action response deadline applies to all of it.

Argue the du Pont factors with evidence

The examiner weighed the factors described in our post on how likelihood of confusion is decided. Your response reweighs them, and each point needs an exhibit.

• Differences in the marks. Show that the shared element is not the dominant one, that the marks differ in sound or meaning, or that they create different commercial impressions. Dictionary entries, pronunciation evidence and the marks as actually displayed support this.
• Differences in the goods and trade channels. Show, with web pages and industry sources, that the goods are sold through different channels to different buyers and that companies in this field do not sell both.
• Weakness of the cited mark. Submit third-party registrations and evidence of third-party use of the shared term on similar goods. A term many businesses use is one consumers have learned to distinguish, and the cited registration is entitled to only a narrow scope.
• Purchaser sophistication. Where the goods are expensive, technical or bought by professionals, show it.

Attach the evidence to the response. Statements about what the marketplace looks like, without exhibits, are treated as attorney argument and given little weight.

Amend the identification of goods and services

If the overlap comes from broad wording, narrow it. An identification can always be restricted and never expanded, so an amendment that removes the overlapping goods, limits the channels of trade or specifies the customer base can take the application out of the cited mark’s path. Make sure the narrowed scope still covers what you sell, because goods deleted now cannot be added back later. This option is often combined with an argument on the remaining goods.

Obtain a consent agreement from the cited owner

The owner of the cited mark may be willing to agree that the two marks can coexist, especially where the businesses operate in different markets. The USPTO gives real weight to a consent agreement that explains why confusion is unlikely, describes the differences in the goods and channels, and commits both parties to steps that will avoid confusion. It gives little weight to a bare statement that the owner does not object. Negotiating a proper agreement takes time, which is one reason to begin the response in the first month rather than the last.

Challenge the cited registration

If the cited mark is no longer in use, the registration can be attacked. A petition to cancel for abandonment, or an expungement or reexamination proceeding to remove goods on which the mark was never or no longer used, can clear the citation. The examining attorney will usually suspend your application while that proceeding runs. These proceedings are handled through our trademark enforcement and TTAB proceedings practice, and whether they are worth the cost depends on how strong the cited mark is and how committed you are to your own. A prior registration of your own mark for related goods, if you have one, is also worth raising, because the examiner should account for the fact that the two marks have already coexisted on the register.

If the examiner maintains the refusal

A response that does not persuade the examiner results in a final office action. At that point you may request reconsideration with new evidence, appeal to the Trademark Trial and Appeal Board, or both, as our post on what happens after a final office action explains. The record you build now is the record the Board will review, so the first response is the place to put every exhibit that matters. And if the refusal reveals that the mark was never clear, the better investment may be a fresh trademark clearance search and a stronger name rather than an appeal.

If you have received a 2(d) refusal and want an honest read on whether it can be overcome, a consultation with Capitol Law Partners can give you that before the deadline gets close. Schedule a consultation.

This article is for informational purposes only and does not constitute legal advice. No attorney-client relationship is formed by this communication.

Attorney Cagatay Ersoy. Practical strategy for founders, investors, and growing companies.

Need help with this topic? See our likelihood of confusion refusal responses page or schedule a consultation.