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Likelihood of Confusion Office Action Under Section 2(d)

By Eric Misterovich

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:

  1. The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impressions.
  2. 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.
  3. The similarity or dissimilarity of established, likely-to-continue trade channels.
  4. The conditions under which buyers to whom sales are made, i.e., “impulse” vs. careful sophisticated purchasing.”
  5. The nature and extent of actual confusion.
  6. 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.


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