Responding to an Office Action

How to Respond to a 2(d) “Confusingly Similar” Rejection

Section 2(d) of the Lanham Act is one of the most common reasons for the refusal of a trademark application by the United States Patent and Trademark Office (USPTO). It prohibits registration of a mark that is likely to cause confusion with a previously registered or pending mark. In this blog post, we will discuss the Section 2(d) refusal and how to overcome it.

What is a Section 2(d) Refusal?

A Section 2(d) refusal occurs when the USPTO examiner determines that a trademark is likely to cause confusion with a previously registered or pending mark. This determination is based on a variety of factors, including the similarity of the marks, the similarity of the goods or services, and the strength of the prior mark.

The USPTO will issue a Section 2(d) refusal in the form of an Office Action, which will provide a detailed explanation of the examiner’s reasoning for the refusal. The applicant then has the opportunity to respond to the Office Action and provide arguments and evidence to overcome the refusal.

How to Overcome a Section 2(d) Refusal?

To overcome a Section 2(d) refusal, an applicant must provide evidence and arguments to demonstrate that the proposed mark is not likely to cause confusion with the prior mark.

Here are some strategies that an applicant can use to overcome a Section 2(d) refusal:

Argue that the Marks are Not Similar

The more dissimilar the marks are, the less likely they are to cause confusion. An applicant can argue that the marks are sufficiently different in terms of appearance, sound, meaning, and commercial impression to avoid confusion.

Argue that the Goods or Services are Not Related

If the goods or services associated with the marks are not related, then there is less likelihood of confusion. An applicant can argue that the goods or services associated with the proposed mark are sufficiently different from those associated with the prior mark to avoid confusion.

Argue that the Prior Mark is Weak

If the prior mark is weak, meaning it is not well-known or distinctive, then it is less likely to be infringed upon. An applicant can argue that the prior mark is weak and therefore less likely to cause confusion.

Argue that there is No Actual Confusion

Evidence of actual confusion, such as customer complaints or returns, can be used to demonstrate that the marks are likely to cause confusion. An applicant can argue that there is no evidence of actual confusion between the marks.

Limit the Goods or Services Associated with the Proposed Mark

An applicant can limit the goods or services associated with the proposed mark to avoid overlap with the prior mark. This can help to reduce the likelihood of confusion between the marks.

There are several cases that provide examples of successful strategies to overcome a Section 2(d) trademark refusal. Here are a few notable cases:

In re Optum, Inc. (2020)

In this case, the USPTO refused registration of the mark OPTUM+HEALTH for various healthcare services, finding that it was likely to cause confusion with the registered mark OPTUM for related healthcare services. The applicant argued that the marks were distinguishable in appearance, sound, and commercial impression, and that the goods and services associated with the marks were not identical or closely related. The applicant also submitted evidence of third-party use of similar marks in the healthcare industry. The Trademark Trial and Appeal Board (TTAB) ultimately agreed with the applicant and reversed the Section 2(d) refusal, finding that the marks were not likely to cause confusion.

In re Coors Brewing Co. (2019)

In this case, the USPTO refused registration of the mark BANQUET BEER for beer, finding that it was likely to cause confusion with the registered mark COORS BANQUET for beer. The applicant argued that the marks were distinguishable in appearance, sound, and commercial impression, and that the goods were not identical or closely related. The applicant also submitted evidence of third-party use of similar marks for beer. The TTAB ultimately agreed with the applicant and reversed the Section 2(d) refusal, finding that the marks were not likely to cause confusion.

In re The MathWorks, Inc. (2019)

In this case, the USPTO refused registration of the mark MATLAB for various software products, finding that it was likely to cause confusion with the registered mark MATHLAB for educational software. The applicant argued that the marks were distinguishable in appearance, sound, and commercial impression, and that the goods were not identical or closely related. The applicant also submitted evidence of third-party use of similar marks in the software industry. The TTAB ultimately agreed with the applicant and reversed the Section 2(d) refusal, finding that the marks were not likely to cause confusion.

These cases demonstrate that it is possible to overcome a Section 2(d) refusal by carefully considering the factors that led to the refusal and developing a persuasive response. Strategies such as arguing that the marks are distinguishable, the goods or services are not related, or the prior mark is weak, can be effective in convincing the USPTO to withdraw the refusal. It is important to work with a qualified trademark attorney to develop a strong response and increase the chances of success in overcoming a Section 2(d) refusal.

In re Bohemia Crystal (2017)

In this case, the USPTO refused registration of the mark BOHEMIA CRYSTAL for glassware, finding that it was likely to cause confusion with the registered mark BOHEMIA for glassware. The applicant argued that the marks were distinguishable in appearance, sound, and commercial impression, and that the goods were not identical or closely related. The applicant also submitted evidence of third-party use of similar marks in the glassware industry. The TTAB ultimately agreed with the applicant and reversed the Section 2(d) refusal, finding that the marks were not likely to cause confusion.

In re Morgan Creek Productions (2015)

In this case, the USPTO refused registration of the mark ACE VENTURA for various entertainment services, finding that it was likely to cause confusion with the registered mark ACE for television broadcasting services. The applicant argued that the marks were distinguishable in appearance, sound, and commercial impression, and that the goods and services were not identical or closely related. The applicant also submitted evidence of third-party use of similar marks in the entertainment industry. The TTAB ultimately agreed with the applicant and reversed the Section 2(d) refusal, finding that the marks were not likely to cause confusion.

In re 3D Printing Systems (2014)

In this case, the USPTO refused registration of the mark 3D SYSTEMS for 3D printing services, finding that it was likely to cause confusion with the registered mark 3D SYSTEM for 3D printing services. The applicant argued that the marks were distinguishable in appearance, sound, and commercial impression, and that the goods and services were not identical or closely related. The applicant also submitted evidence of third-party use of similar marks in the 3D printing industry. The TTAB ultimately agreed with the applicant and reversed the Section 2(d) refusal, finding that the marks were not likely to cause confusion.

Received a Trademark Office Action or Refusal and Need Help Overturning It?

We understand that receiving a trademark office action or refusal can be frustrating. While a Section 2(d) refusal can be a challenging obstacle to overcome applying for a trademark, it is often possible to overcome the refusal and successfully register the trademark by carefully considering the factors that led to the refusal and developing a persuasive response.

We specialize in overturning USPTO trademark office actions and getting trademarks approved and registered. So, if you have questions about Section 2(d) refusals or if you need help overturning an office action, reach out to us. We can be reached at 1 800-651-7301, via email at info@trademarkattorneyslosangeles.com, or through our contact form below.