Receiving a USPTO Office Action stating that your trademark has been refused because of a “likelihood of confusion” can be concerning, particularly if you have already invested significant time and money in your brand. A likelihood of confusion refusal does not necessarily mean that your trademark application is over. It means that the examining attorney believes your mark is too similar to an existing registered trademark for related goods or services.
Understanding why the refusal was issued—and whether there are persuasive grounds to respond—is an important first step before deciding how to proceed.
What Is a Likelihood of Confusion Trademark Refusal?
The United States Patent and Trademark Office may refuse registration of a trademark under Section 2(d) of the Lanham Act when the applied-for mark is sufficiently similar to an existing registered mark that consumers are likely to be confused about the source of the parties’ goods or services.
The analysis is not limited to whether two trademarks are identical.
The USPTO considers multiple factors, including the similarity of the marks and the relationship between the goods or services. Depending on the circumstances, differences in appearance, sound, meaning, commercial impression, channels of trade, and the nature of the relevant goods or services may become important.
For that reason, simply finding another trademark containing the same word does not necessarily determine whether registration should be refused.
How Does the USPTO Determine Whether Trademarks Are Confusingly Similar?
Two of the most significant considerations are generally:
1. The similarity of the trademarks.
The examining attorney considers the marks as a whole, including similarities in appearance, sound, meaning, and overall commercial impression.
2. The relationship between the goods or services.
Even similar marks may coexist when the respective goods or services are sufficiently unrelated. Conversely, the goods or services do not need to be identical for the USPTO to find a likelihood of confusion.
The analysis is highly fact-specific. A meaningful evaluation therefore requires more than comparing two names side by side.
Does a Section 2(d) Refusal Mean My Trademark Cannot Be Registered?
Not necessarily.
A likelihood of confusion refusal is a substantive Office Action, but applicants generally have an opportunity to respond. Whether a response is likely to succeed depends on the particular marks, the cited registration or registrations, the identified goods or services, and the legal and factual basis for the examining attorney’s refusal.
Possible responses may involve legal arguments regarding differences between the marks, differences in the goods or services, differences in commercial impression, or other relevant evidence and circumstances.
There is no single response that works for every Section 2(d) refusal.
Can I Respond to a Likelihood of Confusion Office Action Myself?
Trademark applicants may respond to their own Office Actions if permitted under USPTO rules. However, a likelihood of confusion refusal is a substantive legal refusal rather than simply a request to correct administrative information.
A response may require analysis of the cited registrations, applicable trademark law, USPTO examination standards, the relationship between the respective goods or services, and evidence supporting the applicant’s position.
Before responding, it is important to understand not only what the examining attorney has cited, but why the USPTO believes consumers are likely to be confused.
What If an Online Trademark Filing Company Filed My Application?
Online filing services can assist applicants with submitting trademark applications, but receiving a substantive refusal can change the nature of the matter.
If your application has received a Section 2(d) likelihood of confusion refusal, the next step is not simply completing another form. The refusal should be evaluated to determine the strength of the USPTO’s position, the available arguments, and whether pursuing the application remains commercially sensible.
Applicants who filed themselves or used an online filing service may choose to consult a trademark attorney after receiving an Office Action.
How Long Do I Have to Respond to a USPTO Office Action?
USPTO Office Actions contain a response deadline. Missing the applicable deadline can result in abandonment of the application.
Because deadlines and available extension procedures can depend on the type of Office Action and circumstances of the application, applicants should review the Office Action carefully and address it promptly rather than waiting until the deadline approaches.
Should I Hire a Trademark Attorney for a Likelihood of Confusion Refusal?
Whether hiring counsel makes sense depends on the complexity of the refusal, the importance of the trademark to the business, the strength of the potential response, and the applicant’s broader brand strategy.
An attorney can review the Office Action and cited registrations, evaluate the examining attorney’s reasoning, identify potential arguments and evidence, and discuss the practical options available to the applicant.
Sometimes the appropriate strategy is to challenge the refusal. In other circumstances, amendment, consent, a different filing strategy, or reconsideration of the mark itself may warrant discussion. The appropriate approach depends on the particular application.
Bales & Bales Can Review Your Trademark Office Action
Bales & Bales, P.A. assists businesses and entrepreneurs with federal trademark matters, including trademark searches, USPTO applications, and substantive Office Actions.
If you received a likelihood of confusion refusal, we can review the Office Action, the cited registration or registrations, and your application to evaluate the issues raised by the USPTO and discuss potential next steps.
[Contact Bales & Bales, P.A.] to discuss your trademark Office Action.
This article is for general informational and marketing purposes only and does not constitute legal advice or create an attorney-client relationship. Trademark matters are fact-specific, and past results do not guarantee future outcomes.