How to Avoid A Trademark Application Refusal Because of 2(d) Confusion If your trademark is too much like someone else’s trademark and that someone else registered their trademark with the USPTO or their trademark application was pending before your application, your application is likely to be refused. USPTO Trademark Examining Attorneys often refuse to register an applicant's mark under Section 2(d) of the Trademark Act of 1946, 15 U.S.C. § 1052(d), on the ground that applicant's mark is likely to cause confusion with the previously registered or pending mark. This is also known as a likelihood of confusion refusal. Other conflicts that cause refusals are based on the likelihood of mistake or deception. Likelihood of confusion is the most common refusal for trademarks or service marks along with common refusals based on goods and services identification problems. Approximately 70% of USPTO trademarks are initially refused registration. ( Thirty percent of all TEAS PLUS applications proceed directly to publication without an office action. See USPTO Trademark Notice) Other reasons for refusal include: Merely Descriptive and Deceptively Misdescriptive; Primarily Geographically Descriptive and Primarily Geographically Deceptively Misdescriptive; Primarily Merely a Surname. There is no mechanical test for determining likelihood of confusion, many legal principles are involved including distinctiveness and distinctive elements; whether a mark is strong or weak; are the goods or services related; whether or not a mark has a pseudo mark; similarity and dissimilarity of the marks and others. A likelihood of confusion determination under Section 2(d) is based on an analysis of all of the probative facts in evidence that are relevant to the DuPont factors bearing on the likelihood of confusion issue. The USPTO international classification system has been set up for the convenience of trademark offices worldwide, and serves the interest of merchants and manufacturers who own marks in the United States, as well as their trademark counsel. In the United States, a registrant's rights are determined by the wording contained in the identification of goods. By contrast, in countries that permit an applicant to include "all the goods" within a particular class, the classification system is more critical in determining the trademark owner's rights. See Jean Patou, Inc. v. Theon, Inc., 9 F.3d 971, 975, 29 USPQ2d 1771 (Fed. Cir. 1993). The Thirteen DuPont Factors In re E.I. DuPont DeNemours & Co., 476 F.2d 1357, 1361 (CCPA 1973), established a test [the thirteen DuPont factors] for determining whether there is a likelihood of confusion: In testing for likelihood of confusion . . . the following, when of record, must be considered: (1) The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. (2) The similarity or dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use. (3) The similarity or dissimilarity of established, likely- (4) The conditions under which and buyers to whom sales are made, i.e. `impulse' vs. careful, sophisticated purchasing. (5) The fame of the prior mark (sales, advertising, length of use). (6) The number and nature of similar marks in use on similar goods. (7) The nature and extent of any actual confusion. (8) The length of time during and conditions under which there has been concurrent use without evidence of actual confusion. (9) The variety of goods on which a mark is or is not used (house mark, `family' mark, product mark). (10) The market interface between applicant and the owner of a prior mark. . . . (11) The extent to which applicant has a right to exclude others from use of its mark on its goods. (12) The extent of potential confusion, i.e., whether de minimis or substantial. (13) Any other established fact probative of the effect of use.
The following section is taken from the USPTO’s TESS Online Help. For more information and specific examples on how to search see: How To Trademark Search Using TESS; How to Search for Marks Published for Opposition; How to Search For Marks on the Supplemental Register. USPTO Likelihood of Confusion Search Principles (From TESS Online Help ) Following are the likelihood of confusion search principles used by the USPTO that you may want to consider prior to submitting a trademark application. You must decide which of these search principles may be appropriate for your trademark search. Even if you diligently follow all these search principles, that does not necessarily guarantee that you will find all potential citations under Section 2(d) of the Trademark Act.
________________________________________________________________________________ Trademark Application Checklist 1. Check Inherent Strength Does your trademark consist of inherently distinctive element(s) that can be claimed for exclusive use? Marks that are merely descriptive (or worse, generic) are hard to register and hard to protect. Section 2(e) refusals are very common refusals. Whether a trademark is merely descriptive depends on the goods and services description. 2. Check Right to Use Does the trademark have a likelihood of confusion with prior- Likelihood of confusion refusals are very common refusals and lead to many trademark applications going abandoned. 3. Check Right to Register Does the trademark meet the USPTO rules of registration? (Does not have any grounds for refusal?) 4. Check Specimen Is the trademark used as a trademark or service mark in the specimen? Specimen refusals are very common refusals. The right type of specimen for any particular application depends on what the goods or services are. 5. Check Goods and Services ID Is the goods/services identification appropriate to distinguish the trademark from a similar trademark with different goods or services? Definite and accurate? Is the services ID as broad as it should be under the circumstances or will a narrower description distinguish it better? ID refusals are common too but getting the right description identifies the scope of protection. Too narrow of a description can yield narrow rights. Too broad of a description can result in an unnecessary likelihood of confusion with someone else. 6. Check which application form is the best for your trademark application. TEAS Plus? TEAS Standard? Need help? Call 1- Not Just Patents ® and Aim Higher® are registered trademarks of Not Just Patents LLC. |
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