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What Is a Section 2(d) Likelihood of Confusion Refusal?

When your trademark application is rejected, the USPTO will issue an office action explaining the rejection.  You will then have to address and overcome these issues before your application can move forward.  One of the most common rejections is the Section 2(d) likelihood of confusion refusal.  Unfortunately, this is also one of the most difficult refusals to overcome.  However, you may have some options if you have received this type of rejection.

What Is the Likelihood of Confusion Refusal?

Remember that the primary purpose of trademark law is to prevent consumer confusion.  If I went out and started selling soda under the name COKA COLA, people may be confused or accidentally purchase my product when what they really wanted was a Coca-Cola.  Also, Coca-Cola has spent a ton of time and money investing in their name and enforcing their rights to it.  For me to come along and piggyback off of their hard work and investment would clearly be unfair.  Trademark law prevents this by giving them the exclusive right to use COCA-COLA for certain products and services.

Not only does trademark law give them these exclusive rights to the COCA-COLA name, but it also protects them against the use and registration of confusingly similar names.  This is the basis for the likelihood of confusion refusal.  We can’t allow the registration of just any trademark when someone else may already own a similar trademark.  If we did, that would defeat the entire purpose of trademark law.  Instead, when the Trademark Office gets an application, they conduct a search of their database to see if anything similar is already registered.  If so, they cite that registration as a basis for rejecting the application for a similar mark.

How Can I Avoid This Refusal?

Unfortunately, there is no way to 100% guarantee that you will not get this refusal.  However, there is an important step you can take to minimize the risk before filing your application.  You can hire a trademark attorney to conduct a federal search before you file to let you know what other marks are out there.  Actually, even before you decide to work with an attorney you might conduct your own knockout search using the USPTO’s TESS system.  That way if you find an obvious conflict, you can look at other options before you pay for a more comprehensive search.

The earlier you conduct your research, the better off you will be.  Someone that files their application without first researching will not hear back from the USPTO for several months.  If there is a likelihood of confusion refusal, they most likely spent a good deal of money investing in their trademark during those months.  Now they will have to decide whether to move forward without a federal registration, or to start the process (and spending) over again.

Now I know some of you have probably already filed and received a likelihood of confusion rejection, which brought you to this post.  Obviously, conducting a search is not going to help you at this point.  You may still have some options to overcome the rejection, though.

Is There Any Way to Overcome a Likelihood of Confusion Refusal?

While in many cases a likelihood of confusion refusal is “game over” for your trademark application, that isn’t always the case.  Here are some of the options that you may have available to you:

  • Arguing Against the Rejection – This is exactly as it sounds.  If you believe that there isn’t really a likelihood of confusion between your mark and the registered mark, you can make your case back to the Examining Attorney.  Maybe you think the marks themselves just aren’t that similar.  Or maybe you do not believe the products/services for each mark are related.  If you provide a convincing argument, the Examining Attorney may withdraw the rejection.
  • Cancellation of the Registration – As I recently wrote, there are many reasons that you can seek cancellation of a registered trademark.  If you can cancel the cited registration, then it will no longer stand in your way.  You might also use the cancellation as leverage to negotiate what is called a “coexistence agreement” with the owner of the registration.  In most cases, such an agreement can be used to allow your application to move forward.
  • Renewal of the Registration – Trademark registrations have to be renewed from time to time.  If you notice that the cited registration has not been renewed on time, you can tell the Examining Attorney and they will either suspend action on your application or (if the registration should have already been cancelled) should help to make sure the registration gets cancelled.
  • Amending Goods/Services Description – Technically, if the goods/services in the cited registration are only related to some of the goods/services in your application, the Examining Attorney should limit the refusal to just those goods/services.  That allows your application to move forward with whatever unrelated goods/services are in your application.  In practice, this does not always happen.  Sometimes you may be able to get your application approved by amending the goods/services description to remove those goods/services that are closest to what is in the registration.  You may also need a “mini-argument” to tell the Examiner that what is left in your application is not related to what is in the registration.

Needless to say, you are much more likely to have success if you have an attorney assist you with overcoming the rejection, especially if you are filing a trademark cancellation.  One thing you do not want to do is to contact the owner of the registration.  If you receive a likelihood of confusion rejection, the only call you should be making is to an attorney.

Need Assistance in Responding to an Office Action?

Whether you received a major rejection like this, or based on a smaller issue, you need to make sure a competent response is filed so that your application can move forward.  I would be happy to review the office action free of charge, and let you know whether I can help you.  If you would like my assistance, please feel free to call me at (480) 360-3499, email me at kevin@yourtrademarkattorney.com, or complete the contact form found on this page to schedule your free initial consultation today.  I look forward to speaking with you.

Contact Kevin

P.O. Box 94208
Phoenix, AZ 85070

(480) 360-3499

kevin@yourtrademarkattorney.com

© 2019 Kevin Haynie
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