3 Ways to Overcome a Likelihood of Confusion Trademark Refusal from the USPTO

Over the years, at EMP&A we have become quite experienced at dealing with likelihood of confusion refusals from the USPTO. Even when an application is filed by an attorney, there still are circumstances where an examiner may issue an office action finding a likelihood of confusion with one or more registered trademarks. There are three different potential ways to overcome a likelihood of confusion, otherwise known as a 2D refusal.

The first and most common way is to submit arguments in an office action response to the examiner, which might cover:

• different meanings of the marks
• different spellings or wordings in the marks
• how shared elements could be diluted or weaker
• focusing on how related or unrelated the goods or services of the applicant and the registrant are

The second way to possibly overcome a Section 2(d) refusal is to obtain consent from the registrant. You generally only want to approach a registrant if you’re sure that you have priority, and priority can be complicated, and there are always risks of contacting another party, but sometimes that’s the best option if the facts are in the applicant’s favor. You want to examine the pros and cons, what incentive the other party may or may not have to cooperate, and an important factor in this possibility is that the examination by the USPTO isn’t always realistic. Realistically, the parties may agree that there’s no confusion, where an examiner may be bound by what’s in the records and convinced that there is a likelihood of confusion.

The third way to address a 2(d) likelihood of confusion is to potentially cancel the cited registration. Sometimes the cited registration will become canceled on its own during the process. That would generally be if it’s up for renewal and it’s not renewed. Important considerations include:

• what are the dates at issue?
• when is a response due?
• when is the registration up for renewal?
• is there some opportunity to wait and see if the registration becomes canceled or abandoned on its own?

Otherwise, if the facts and circumstances are appropriate, it may be possible to petition for cancellation or expungement of a cited registration, thus removing the obstacle itself. Essentially, you’re no longer trying to co-exist with or get around the obstacle, you’re trying to remove the obstacle.

Simply put, the first tactic—arguing—is trying to get around the obstacle. The second—consent—is trying to co-exist with the obstacle, and the third—cancellation—is trying to remove the obstacle, the cited registration.