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.