A Section 2(d) office action means a USPTO examining attorney has concluded that your trademark so resembles an existing registered mark that consumers are likely to be confused about the source of the goods or services. It is not the end of your application. You typically have three months to respond, and you can often overcome the refusal by showing that the marks or goods differ, narrowing your identification of goods, obtaining the registrant’s consent, or challenging the cited registration.
What Section 2(d) Prohibits
Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d), bars registration of a mark that so resembles a mark registered in the USPTO, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on the applicant’s goods, to cause confusion, mistake, or deception. The question is not whether consumers will mix up the marks themselves, but whether they are likely to believe the goods or services come from the same source.
A refusal reflects the examining attorney’s view of the evidence in the record when the office action issued. That means a response with the right arguments and evidence can change the outcome. For a plain-English overview, see what to do when your trademark is rejected for likelihood of confusion.
The du Pont Factors
Examining attorneys and the Trademark Trial and Appeal Board (TTAB) apply the thirteen factors from In re E. I. du Pont de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973). Not every factor is relevant in every case, and each case is decided on its own facts. The factors are:
- the similarity of the marks in appearance, sound, connotation, and commercial impression;
- the relatedness of the goods or services;
- the similarity of established, likely-to-continue trade channels;
- the conditions of sale, such as impulse versus careful, sophisticated purchasing;
- 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 and conditions of concurrent use without actual confusion;
- the variety of goods on which the mark is used;
- the market interface between the applicant and the prior owner, such as a consent agreement;
- the extent to which the applicant has a right to exclude others;
- the extent of potential confusion; and
- any other established fact probative of the effect of use.
According to the Trademark Manual of Examining Procedure (TMEP) § 1207.01, two considerations are usually most important: the similarity of the marks and the relatedness of the goods or services.
Know Your Response Deadline
For most applications, the USPTO must receive your response within three months of the office action’s issue date. You may request one three-month extension for a fee, and the request must be filed by the original deadline. Applications under the Madrid Protocol (Section 66(a)) have six months to respond with no extension. Always confirm the period stated in your office action, because an application is abandoned if a complete response is not timely filed. The USPTO’s response time guidance and our article on the office action response period explain the rules.
Strategies for Overcoming a Section 2(d) Refusal
Argue the Marks Create Different Commercial Impressions
Marks are compared in their entireties for appearance, sound, connotation, and commercial impression. A response may show that the shared element is weak or descriptive, that the dominant portions differ, or that the marks carry different meanings. Evidence such as dictionary definitions and examples of how the marks appear in the marketplace makes these arguments more persuasive than attorney argument alone.
Show the Goods or Services Are Not Related
The comparison is based on the goods and services as identified in your application and the cited registration, not on how either party actually does business. If the cited registration has no restrictions, it is presumed to cover all goods of the type described, moving in all normal channels of trade. Arguments about differences in price or quality that are not reflected in the identification generally will not help. The better approach is evidence that goods like those identified are not typically offered by the same source under the same mark.
Amend the Identification
Because the analysis is driven by the written identification, narrowing your own description of goods or services can sometimes remove the overlap. An amendment will not help if the cited registration is broadly worded and still covers your narrowed goods, and amendments cannot expand the original scope of the identification.
Point to a Crowded Field
If many third parties use similar marks for similar goods, consumers may have learned to distinguish between them based on small differences. The Federal Circuit endorsed this reasoning in Juice Generation, Inc. v. GS Enterprises LLC, 794 F.3d 1334 (Fed. Cir. 2015), and Jack Wolfskin Ausrüstung für Draussen GmbH & Co. KGaA v. New Millennium Sports, S.L.U., 797 F.3d 1363 (Fed. Cir. 2015). Evidence of actual marketplace use is most persuasive; third-party registrations not based on use in commerce, such as those issued solely under Section 44 or 66(a), have very little persuasive value.
Negotiate a Consent Agreement
A consent agreement with the owner of the cited registration can be strong evidence. The TMEP distinguishes a “naked” consent, which simply says the registrant does not object and carries little weight, from a “clothed” agreement that explains why confusion is unlikely, for example by describing separate trade channels, field-of-use restrictions, and the parties’ commitment to prevent and address any confusion. A detailed agreement between parties who know the marketplace is often persuasive.
Challenge the Cited Registration
Sometimes the best path is to remove the obstacle. If the cited mark is abandoned or otherwise vulnerable, you can petition the TTAB to cancel it and notify the examining attorney, who will suspend your application pending the outcome if it is otherwise in condition for approval or final refusal. If the registrant never used the mark for some or all of the listed goods or services, the Trademark Modernization Act procedures allow a petition for expungement (between three and ten years after registration) or reexamination (within the first five years), at a USPTO fee of $400 per class. Our article on grounds for cancelling a trademark reviews the options.
If the Refusal Becomes Final
If the examining attorney maintains the refusal, you can file a request for reconsideration with new arguments or evidence, appeal to the TTAB, or both. A second refusal on the same ground may be treated as final for purposes of appeal. The appeal must be filed within the response period for the final action and requires a fee for each class appealed. If the Board affirms, 15 U.S.C. § 1071 allows an appeal to the U.S. Court of Appeals for the Federal Circuit or, alternatively, a civil action in federal district court. If you received a different type of refusal, see our guide on what to do after a USPTO office action.
Avoiding a Section 2(d) Refusal Next Time
Prevention is the most cost-effective strategy. A comprehensive clearance search before filing, covering federal registrations, pending applications, state records, and common law use, can identify conflicts while you can still adjust the name. A precise identification of goods and services also reduces the risk of a paper overlap that does not reflect how you actually do business.
Get Help with Your Office Action Response
Every Section 2(d) refusal turns on its own marks, goods, and evidence, and the strongest responses often combine several of these strategies.
The trademark registration attorneys at Revision Legal prepare office action responses, negotiate consent agreements, and handle TTAB appeals. Contact us through the form on this page or call (855) 473-8474.
