USPTO Trademark Office Action Responses: Section 2(d) Refusal

If you applied to register your trademark, you may receive a notice in your e-mail inbox that looks like this:

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 00/00/2016 FOR U.S. APPLICATION SERIAL NO.0000000

Please follow the instructions below:

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov/, enter the U.S. application serial number, and click on “Documents.”

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

(2)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

Unfortunately, this means that the United States Patent and Trademark Office (the “USPTO”) attorney reviewing your application has found at least one reason to reject your trademark application and issue an “Office Action” against your trademark application.

You are not alone. The United States Patent and Trademark Office receives hundreds of thousands of applications a year for trademark registrations. Each of those applications are then assigned to Examining Attorneys, who are government attorneys trained to spot potential issues and accept, or reject, trademark applications for many different reasons. One of the most common reasons that a USPTO attorney denies a trademark application is based on a “likelihood of confusion” with a registered trademark under Section 2(d) of the Lanham Act.

Not sure if you received a likelihood of confusion or Section 2(d) denial? Your Office Action may include a passage like the following:

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 0000000 and 0000000.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the enclosed registrations.

Applicant’s mark is TRADEMARK for, in relevant part, “goods and services” in Class 00.

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a potential consumer would be confused, mistaken, or deceived as to the source of the goods and/or services of the applicant and registrant.  See 15 U.S.C. §1052(d).

If you see this passage in the Office Action, then your application was denied because of a pre-existing registered trademark that, the Examining Attorney believes, is confusingly similar to the one you are attempting to register for related goods and services. You have several options moving forward and you should speak to an experienced trademark attorney about the best path for your business and your budget. This article discusses potential options and the steps involved.

What is a Likelihood of Confusion denial? What is Section 2(d) of the Lanham Act?

Section 2(d) of the Lanham Act essentially states that a trademark application will be denied if another trademark registration is already registered for related goods and/or services that is confusingly similar to the applicant’s trademark.

There are eleven factors that the USPTO uses in determining likelihood of confusion, but, beware, these factors are not weighted evenly in the analysis.  Generally, the most important considerations are whether the marks are similar in sight, sound, or meaning (i.e. commercial impression) and whether the goods and services are related. If you received a 2(d) refusal, then the Examining Attorney believed that the cited marks are confusingly similar and are for related goods and services.

Once the Office Action is sent by the U.S. government, you have three months to respond and address all of the issues in the Office Action or your application will be abandoned. If more time is needed, you can apply for a one-time extension of three months. This extension costs an additional $125 and you must apply for it before your initial response deadline has passed.

If your trademark application receives an Office Action, you have a few options and the best one will be determined by a lot of different factors. Let’s go over the potential options. In this article, we will discuss what a substantive response to refusal looks like, as well as some legal consideration that the Examining Attorney will take into account.

Responding to a Likelihood of Confusion Office Action with Legal Arguments

Trademark Office Action responses come in many different forms, but effective ones utilize both legal arguments and effective research and examples to prove those legal arguments.

For example, let’s say the Examining Attorney denied your trademark for “IN THE WAY” for a fast-food restaurant services because of a pre-existing registered trademark for “ON MY WAY” for restaurant services.

An effective argument (if supported by proper evidence) may be that IN THE WAY has a unique commercial impression than ON MY WAY.  However, making such a cursory statement on its own would not be enough—you must provide proof that the relevant consumer would view the phrases as distinct. As a trademark attorney, I might look at use of the phrase “in the way” on restaurant blogs, in magazines, and in news articles, among other sources. I could then compare that evidence to uses of “on my way” to show that consumers would believe that “in the way” means that something is obstructing a path and “on the way” means that it is alongside a route. I would also show that the marks only share one word and argue that they are different enough not to cause confusion. To that end, I would provide citations to previous TTAB and Federal Circuit cases with similar fact patterns to prove each of these points. If I have the evidence to support it, this argument may be effective in changing the Examining Attorney’s mind.

However, as mentioned above, there are many factors in the analysis. In the example above, I would have an extremely difficult time arguing that the services aren’t related – restaurant services and fast-food restaurant services are most certainly related. The USPTO Examining Attorney does not look at the real-world usage of either company – the Examining Attorney only looks at what is within the “four-corners” of the registration or applications. If the services were, for example, fast-food restaurant services and travel guide services, then I would likely argue that those two services are not related (unless I found compelling evidence showing that they were – this is purely a hypothetical.) I would provide evidence that consumers are unlikely to believe that tour guide services and fast-food restaurant services originate from one source. I could provide industry statistics and other evidence showing that the industries are separate and do not overlap among other evidence.

What else would help? Evidence that the consumers are sophisticated helps to minimize confusion. Evidence that the products (or services) are generally sold in different trade channels or to specific types of confusing may also help. There are dozens of different considerations.

Losing Arguments

While there are a wide variety of responses, certain arguments will almost always be losing arguments that will not win.

For example, what if the owner of the ON MY WAY mark is not using it anymore?

What if the restaurant is actually a catering service, not a restaurant (as listed in the registration)?

What if you have been using the trademark for longer than the registered trademark’s owner?

Should you make those arguments in response to an Office Action? No. The USPTO will not accept any arguments that are attacks on an active registered trademark in an Office Action response. The only way to challenge the scope or validity of a registered trademark is through a cancellation proceeding before the Trademark Trial and Appeal Board (the “TTAB”).

Conclusion

With the right evidence and legal theory, an Office Action response to a likelihood of confusion refusals can convince the government attorney to withdraw his or her objections and allow your application to proceed. However, the best argument is not a one-size-fits-all approach – an effective argument will take into consideration many different factors to come up with a tailored approach for the individual applicant.

Finally, it is always our suggestion to engage legal counsel before responding to a trademark Office Action.  This is because anything you submit to the USPTO (via a formal response or via e-mail) becomes part of the official record of your trademark and will live in the USPTO’s publicly available files forever.  If you submit something in writing to the USPTO that is legally or factually inaccurate it could affect your ability not only to register your trademark but to police your trademark against others in the future.  Our firm is happy to provide a complimentary consultation on your Office Action to see if we can help.  Please simply complete our contact form and an attorney will be in touch to discuss your matter.

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Josh Gerben, Esq.

Josh Gerben, Esq. is the founder and principal of Gerben IP. In 2008, Mr. Gerben started the firm to provide high-quality trademark services at reasonable prices. Today, he is recognized by the World Trademark Review as a top trademark filer, having registered over 7,500 trademarks. The contents of this blog are for informational purposes only and may not be relied on as legal advice.