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How To Overcome A 2(d) Likelihood Of Confusion Refusal

Receiving an Office Action that refuses your trademark application can be overwhelming. Most importantly, trademark applicants should be armed with knowledge of the general rules that apply so effective arguments can be crafted for a response to the Office Action. A common mistake is that applicants submit the wrong type of arguments in reply to a 2(d) Likelihood of Confusion Refusal. See our firm page entitled, Likelihood of Confusion Refusals, 2(d) Refusals, to review the 13 factors considered in this analysis. Below are ten critical rules for trademark applicants to keep in mind when confronted with a likelihood of confusion refusal.

Rule 1- What if you have legally identical or virtually identical marks? If this is the case then, a lesser degree of similarity between the goods and services will suffice to find a likelihood of confusion.  In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); Gen. Mills, Inc. v. Fage Dairy Processing Indus. S.A., 100 USPQ2d 1584, 1597 (TTAB 2011); In re Iolo Techs., LLC, 95 USPQ2d 1498, 1499 (TTAB 2010). See also, In re Thor Tech, Inc., 90 USPQ2d 1634, 1636 (TTAB 2009).

Rule 2- What if the goods or services overlap or if the goods or services are identical or virtually identical, then a lesser degree of similarity between the marks is necessary to support a determination that confusion is likely. See Bridgestone Americas Tire Operations, LLC v. Fed. Corp., 673 F.3d 1330, 1337, 102 USPQ2d 1061, 1064 (Fed. Cir. 2012); In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); See also, Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012).

Rule 3- What if only one good or service of a long list overlaps with the cited registration? As long as there is an overlap with any one good or service, the other goods or services in that particular class need not be examined. Typically, likelihood of confusion will be found in connection with the class of goods or services with any overlap at all. See In re Wacker Neuson SE, 97 USPQ2d 1408, 1409 (TTAB 2010).

Rule 4- Another important rule dealing with goods or services that overlap or are identical is that the Board will presume that the distribution channels and the classes of consumers are the same for the applicant and the registrant. See Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011).

Rule 5- Be aware of the “Something More” Rule – When the relatedness of the goods and/or services is not evident, well known, or generally recognized, “something more” than the mere fact that the goods and services are used together must be shown. See, In re St. Helena Hospital, 113 USPQ2d 1082 (Fed. Cir. 2014) [precedential]. There is no per se rule as to what type of evidence will suffice under “something more”. Examples of types of “something more” evidence may include, a famous mark, actual use of a mark for both the goods and services at issue, or evidence of a large number of third-party registrations covering both the goods and services at issue. See, In re Coors Brewing Co., 343 F.3d at 1346, 68 USPQ2d at 1063.

Rule 6- Examining Attorneys rely on the identifications in the application or registration to compare goods and services and trade channels in a 2(d) evaluation. Stone Lion Capital Partners, L.P. v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014). Applicants should restrict the scope of goods or services or trade channels using language in the identification. Extrinsic argument or evidence is typically not allowed to restrict either the goods or services or trade channels. The exception is if the language in the identification is unclear or undefined. See, In re Thor Tech, Inc., 90 USPQ2d 634(TTAB 2009).

Rule 7- The Examining Attorney must provide evidence of relatedness of the goods and/or services. This may include news articles showing the goods and/or services used together, or by the same class of consumers, or advertisements or websites showing the goods and services marketed together, or sold from the same source, or third party use-based registrations showing the same mark branding related goods or services.

Rule 8- Relatedness evidence can consist of the subject application and cited registration. See, Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 1267, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002), where the Federal Circuit held that the Board erred since it did not consider the intent-to-use application and cited registrations as evidence under the second du Pont factor.

Rule 9- Whether additions and deletions to mark (that share common terms) will be enough to obviate confusion will depend on whether the addition or deletion significantly changes the commercial impression, and whether the marks’ shared terms are descriptive or diluted. See TMEP 1207.01(b)iii.

Rule 10- Evidence of third party use or use-based registrations of similar marks on similar goods or services can demonstrate a mark is weak and entitled to a narrow scope of protection. See Juice generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671 (Fed Cir. 2015) where there were 26 third party uses or registrations to demonstrate the mark’s weakness; Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129 (Fed. Cir. 2015), where there were 16 third party uses or registrations to show weakness; and In re Boston Juicery, LLC , Serial No. 86877537 (August 21, 2018) [not precedential], where 12 third party registrations were sufficient to show the shared term was diluted, and should receive a narrow scope of protection.

If you have questions regarding an Office Action or another trademark matter, please contact the firm for a courtesy consultation.