Likelihood of Confusion Office Action Under 2(d)

The majority of Office Actions issued refuse to register marks under Section 2(d) of the Lanham Act based on a likelihood of confusion with a registered mark. Here, the examining attorney may refuse to register a mark it determines so resembles a registered mark that is likely to cause confusion, mistake, or to deceive.

The Likelihood of Confusion Elements

To determine whether a mark is likely to cause confusion, the examining attorney will apply a number of factors, including:

• The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impressions.
• The similarity or dissimilarity of and the nature of the goods or services as described in an application or registration in connection with which a prior mark is in use.
• The similarity or dissimilarity of established, likely-to-continue trade channels.
• The conditions under which buyers to whom sales are made, i.e., “impulse” vs. careful sophisticated purchasing.”
• The nature and extent of actual confusion.
• A valid consent agreement between the applicant and the owner of the previously registered mark.

To properly respond to a refusal to register based on a likelihood of confusion, the applicant must apply the above elements against the potentially conflicting mark. It is important to remember that not all the factors are weighed evenly, and in any given factual scenario, some elements may be more important than others.

However, in the vast majority of cases, the similarity of the marks themselves is the most important factor.

What Makes Two Marks Similar?

Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression. See Crocker Nat’l Bank v Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986). Although marks are compared in their entireties, one features of a mark may be more significant or dominant in creating a commercial impression. See In re Viterra Inc, 671 F.3d 1158, 1362 (Fed Cir 2012).

As you can see, the analysis to determine whether a proposed mark would cause confusion can be complex. For example, the applicant should stress all potential differences in appearance, including spelling, sound, and any other factor that promotes a difference commercial impression.

Further, distinguish relevant trade channels, or how the consumers are likely to find the marks, can be an effective argument to respond to a likelihood of confusion office action.

Every Office Action must be address on its own facts and distinctions. To provide your best chance of overcoming the likelihood of confusion refusal, it is highly recommended to retain a trademark attorney to craft a tailored response. To contact Revision Legal, call 855-473-8474.

The Full du Pont Framework

The examining attorney’s likelihood-of-confusion analysis is grounded in the thirteen-factor test established by the Court of Customs and Patent Appeals in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973). The full list of du Pont factors includes:

• 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;
• The similarity or dissimilarity of established trade channels;
• The conditions of purchase (impulse vs. careful, sophisticated purchasers);
• The fame of the prior mark;
• The number and nature of similar marks in use on similar goods;
• The nature and extent of any actual confusion;
• The length of time during and the conditions under which there has been concurrent use without evidence of actual confusion;
• The variety of goods on which a mark is used;
• The market interface between the applicant and the owner of a prior mark;
• The extent to which applicant has a right to exclude others from use of its mark;
• The extent of potential confusion;
• Any other established probative fact.

Not all factors are relevant in every case, and some factors carry more weight than others depending on the specific facts. The examining attorney is not required to discuss factors that are not relevant or for which the record is silent.

Responding to the Office Action: Mark Similarity Arguments

The applicant’s response should address the similarity of the marks directly and in detail. Marks are compared in their entireties, but the dominant element—the part of the mark most likely to create a commercial impression in the consumer’s mind—is often dispositive. If the applicant’s mark contains a dominant element that differs meaningfully from the registered mark, that distinction should be articulated clearly and supported by evidence where available.

Sound differences matter. Marks that look similar on paper may be pronounced differently, reducing the likelihood that consumers will confuse them. Meaning differences matter equally: two marks can share identical spelling but carry entirely different connotations depending on the industry context, creating distinct commercial impressions. See In re Sears, Roebuck & Co., 2 U.S.P.Q.2d 1312, 1314 (TTAB 1987) (noting that marks must be considered in the context of the relevant commercial marketplace).

Responding to the Office Action: Goods and Services Arguments

Even when two marks are similar, registration may be permitted if the goods or services are sufficiently different that consumers are unlikely to encounter both marks in the same purchasing context. The examining attorney looks at the goods and services as identified in the application and the registration—not as they are actually used in commerce. This creates both a challenge and an opportunity: if the identification in the application is broader than the actual use, amending it to more precisely describe the goods or services can sometimes eliminate the conflict.

When goods or services are in related fields, the applicant should emphasize differences in trade channels, customer sophistication, and price points. Expensive goods sold through specialized retailers to sophisticated commercial buyers are less likely to be confused than inexpensive consumer goods sold in the same retail stores. Evidence of actual commercial conditions—including declarations from industry participants, market reports, and evidence of distinct consumer demographics—can support a trade channels argument.

Consent Agreements as a Resolution Path

When the examining attorney’s refusal is based on a likelihood of confusion with a specific registered mark, one of the most effective ways to resolve the impasse is to obtain a consent agreement from the owner of the registered mark. Under TMEP § 1207.01(d)(viii), the USPTO gives “great weight” to consent agreements, provided the agreement establishes that the parties have meaningfully addressed the confusion concern.

A naked consent—simply stating that the registrant consents to the applicant’s registration—is less persuasive than a detailed agreement that explains why confusion is unlikely given the parties’ actual commercial practices. Detailed consent agreements that restrict geographic use, delineate product categories, require distinct trade dress, or otherwise structurally reduce the possibility of consumer confusion carry substantially more weight with examining attorneys.

Negotiating a consent agreement requires identifying the registered mark owner, opening a dialogue, and reaching terms that are acceptable to both parties—tasks that are best handled by experienced trademark counsel familiar with the leverage dynamics involved. Revision Legal’s trademark attorneys handle Section 2(d) office action responses and consent agreement negotiations. Contact us at 855-473-8474 or through the contact form on this page.

Appealing a Final Section 2(d) Refusal

When an examining attorney maintains a Section 2(d) refusal after the applicant’s initial response, the office action becomes final. At that point, the applicant has two options: file a Request for Reconsideration with the examining attorney, or appeal to the Trademark Trial and Appeal Board under 37 C.F.R. § 2.142. Both options may be pursued simultaneously, but the appeal must be filed within six months of the final refusal date.

An appeal to the TTAB on a Section 2(d) issue requires a detailed brief analyzing the du Pont factors as applied to the specific marks and goods or services at issue. The TTAB reviews the examining attorney’s refusal de novo, meaning it makes its own independent determination based on the record before it. Applicants who lost at the examining attorney stage because of a weak or incomplete evidentiary record can sometimes succeed on appeal by supplementing the record with additional arguments and evidence in the appeal brief. If the TTAB affirms the refusal, the applicant may further appeal to the Federal Circuit or file a civil action in district court. Revision Legal handles Section 2(d) appeals at every level of review.