To overcome a refusal of trademark registration under Section 2(d) based on a likelihood of confusion with an existing registered or pending trademark, the primary response is that the marks in question are not confusingly similar under the 13-factor Du Pont analysis. Some winning arguments to support this argument can include:
1. Differences in the Marks:
Visual, Phonetic, or Conceptual Differences: Argue that the marks differ in appearance, sound, or meaning. Even small distinctions in how a mark looks or is pronounced should be pointed out in the response to the office action. The number of letters, words, syllables, spelling differences, and the arrangement of the words can all add up to significant differences.
Design Elements: If the trademark includes design features (logo or stylization), emphasize how these elements set the mark apart from the prior trademark.
2. Goods and Services Differences:
Distinct Classes of Goods or Services: Demonstrate that the goods or services covered by your application are different from those covered by the registered mark. The more specific and different the goods or services, the stronger the argument.
Differences in Channels of Trade: Argue that the goods or services move in entirely different channels of trade, targeting distinct customer groups, reducing any likelihood of confusion.
3. Weakness of the Prior Mark:
Weak or Descriptive Marks: If the cited mark is weak or descriptive, argue that it should be afforded a narrow scope of protection. Common words or phrases used in commerce may not create a strong likelihood of confusion.
4. Coexistence with Other Similar Marks:
Third-Party Registrations or Uses: Provide evidence that similar marks already coexist in the marketplace, suggesting that consumers can differentiate between your mark and the cited mark.
5. Actual Market Conditions:
Lack of Actual Confusion: Provide evidence that the marks have coexisted in the market without any incidents of actual consumer confusion. If the marks have been used concurrently for a period of time, this strengthens the argument.
6. Sophisticated Consumers:
Target Market and Consumer Base: Argue that the target consumers are sophisticated or experienced, and would not be easily confused by similar marks. For example, in industries with highly specialized goods or services, consumers may be less likely to confuse marks.
7. Consent Agreement:
Coexistence Agreement: If possible, negotiate a consent agreement with the owner of the cited mark. This agreement would state that the owners of the two marks believe that no likelihood of confusion exists and will not interfere with each other’s use of the marks. The examining attorney may accept it and allow the applied-for trademark to proceed to registration.
As a final resort, if the refusal is final, the applicant may appeal the decision. In the appeal, these arguments are presented to a panel of administrative judges on the Trademark Trial and Appeal Board (TTAB) who will make a decision on this issue.
The trademark registration process is often not intuitive and brand owners should always have an experienced trademark lawyer on their side. Let us know if you need us in your corner to help you navigate this path. Email Wei Wei Jeang at wjeang@fultonjeang.com.
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