How does the examining attorney review a new trademark application?
Dec 27, 2016 · First, carefully read the legal analysis by the government attorney after “Refusal under Section 2(d) – Likelihood of Confusion with a Registered Mark.” Did the government attorney reject all of your goods and services, or just some? Did he or she give any specific reasoning for why it thought the marks would be confusing? Take note of all of those specific …
Can differences in the goods and services associated with marks overcome confusion?
likely to cause confusion with another mark(s) merely descriptive (or generic) or deceptively misdescriptive ... to convince the examining attorney to withdraw the refusal. *NOTE: To submit a "substitute specimen" to overcome a refusal, also answer "Yes" to #2. Yes No 2. Do you need to do any of the following:
What factors does the USPTO use to determine likelihood of confusion?
likely to cause confusion with another mark(s) merely descriptive (or generic) or deceptively misdescriptive ... convince the examining attorney to withdraw the refusal. *NOTE: To submit a "substitute specimen" to overcome a refusal, also answer "Yes" to #2. O Yes ('No 2. Do you need to do any of the following:
What if my mark is rejected for being confusingly similar?
SECTION 2 (d) REFUSAL – LIKELIHOOD OF CONFUSION. Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 0000000 and 0000000. Trademark Act Section 2 (d), 15 U.S.C. §1052 (d); see TMEP §§1207.01 et seq. See the enclosed registrations.
How do you prove the likelihood of confusion?
The more similarity between the two marks, the more likely the confusion. Similarity of the products or services. The more that the senior and junior user's goods or services are related, the more likely the confusion. Likelihood that the senior user will bridge the gap.
How do you resolve a trademark conflict?
Several options exist to challenge another party's trademark registration or application, depending on the particular circumstances and grounds for challenging: You may challenge a trademark registration issued by the USPTO by filing a petition to cancel the registration with the Trademark Trial & Appeal Board (TTAB).
What are the factors the court will consider in determining likelihood of confusion for trademark infringement?
"Likelihood of confusion"the strength of the trademark owner's mark;the degree of similarity between the trademark owner's mark and the allegedly infringing mark;evidence of actual consumer confusion;the marketing channels used;More items...
What to do if a trademark is similar?
If the goods are similar, it may be possible to amend the goods and services description in your application to avoid the potential confusion. Any such amendment must narrow the description because you are not allowed to add new goods or classes to a trademark application after it has been filed.
What is the best way to show evidence of abandonment of a trademark?
Section 45 of the Lanham Act states a trademark is considered abandoned when “its use has been discontinued with intent not to resume such use.” Abandonment may be inferred from the surrounding circumstances, but proof of nonuse for three consecutive years is prima facie evidence of abandonment.Jul 2, 2020
How do you prove trademark infringement?
To support a trademark infringement claim in court, a plaintiff must prove that it owns a valid mark, that it has priority (its rights in the mark(s) are "senior" to the defendant's), and that the defendant's mark is likely to cause confusion in the minds of consumers about the source or sponsorship of the goods or ...Jun 8, 2018
What is confusion trademark?
Likelihood of confusion exists between trademarks when the marks are so similar and the goods and/or services for which they are used are so related that consumers would mistakenly believe they come from the same source.Feb 19, 2021
How do you respond to the likelihood of confusion rejection?
4 Ways To Overcome A Likelihood Of Confusion RefusalArgue that the marks or goods are different. ... Consent Agreements – agree to coexist with a prior registrant/applicant. ... Argue the prior registration/application is weak. ... Collateral attack – a last resort.
What is a likelihood of confusion?
Likelihood of confusion is a part of a proving trademark infringement. It means that the public is likely to confuse your mark and the mark of another business.
How is the element of confusion defined under the Lanham Act?
§ 1125(a) (“Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which ...Aug 15, 2012
Step 1: Carefully Read the Office Action
First, carefully read the legal analysis by the government attorney after “Refusal under Section 2 (d) – Likelihood of Confusion with a Registered Mark.” Did the government attorney reject all of your goods and services, or just some? Did he or she give any specific reasoning for why it thought the marks would be confusing? Take note of all of those specific arguments, because there is a process for appealing the refusal of the trademark to counter the arguments made by the Examining Attorney..
Step 2: Look Up the Cited Registration
Next, look up the Cited Registration (what we will call the other trademark registration that the USPTO attorney found problematic) in the USPTO’s TSDR database, at http://tsdr.uspto.gov/.
Step 4: Analyze the Goods and Services, First Use Dates, and Owner
Next, look at the goods and services (#1-3, above) of the Cited Registration, along with the alleged “First Use in Commerce date.”
Additional Factors to Consider
It can be a tough call as to whether trademarks are confusingly similar, but generally, the Examining Attorney will look at whether they are similar in sight, sound, and meaning for related goods and services.
Contact Our Experienced Attorneys
As you can see by the scope of issues discussed in this article, overcoming a Section 2 (d) Office Action can be complicated, and, there are many paths to explore.
When did the paperwork reduction act start?
Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 2194 (Rev 03/2012) OMB No. 0651-0054 (Exp. 10/31/2017)
How many megabytes are in a JPG file?
Click on the 'Attach' button to select the file in JPG/PDF format (not exceeding 5 megabytes per attachment) or .WAV, .WMV,.WMA, .MP3, .MPG, or .AVI format (not exceeding 5 megabytes for sound files or 30 megabytes for motion files).
How long do you have to respond to an office action?
Once the Office Action is sent by the U.S. government, you have six-months to respond address all of the issues in the Office Action or your application will be abandoned. However, you have a few options and the best one will be determined by a lot of different factors. Let’s go over the potential options.
Who is Josh Gerben?
Josh Gerben, Esq. is the founder and principal of Gerben Law Firm. In 2008, Mr. Gerben started the firm to provide high-quality trademark services at reasonable prices. Today, he is recognized by the World Trademark Review as a top trademark filer, having registered over 5,500 trademarks. The contents of this blog are for informational purposes only and may not be relied on as legal advice.
What is a narrow scope of protection?
If a term is commonly used, or descriptive of a feature of the goods or services, it is only entitled to a narrow scope of protection. If the only similarity between your mark and the cited mark is a weak term (such as a term that is descriptive, geographic, a surname, or laudatory), you may be able to salvage your application by providing evidence of such weakness. We find this is one of the most effective ways to overcome a likelihood of confusion refusal.
What is the meaning of "point out"?
Point out each and every difference in appearance , sound, connotation (the meaning related to your mark as a whole, and applied to your goods/services), and commercial impression (a consumer’s instant impression after viewing the marks on the goods).
How to search for a trademark?
In the United States, trademark searching typically incorporates three aspects: 1 Assessing whether a mark is “available” for use with particular goods or services 2 Determining whether a mark qualifies for protection under applicable U.S. trademark laws 3 Evaluating whether the mark can be registered with the U.S. Patent and Trademark Office
What is descriptive mark?
Descriptive marks used to describe the products or services for which they are used, or of a quality or feature of those products or services. Deceptive marks, including deceptively misdescriptive and geographically deceptive. Morally or culturally offensive. Confusingly similar to or likely to dilute another mark.
Can a mark be registered on the principal register?
Even though a mark might not qualify for registration on the “Principal Register” initially, it may be possible and advisable to register the mark on the “Supplemental Register” as a first step toward later registration on the “Principal Register.”.
What Is The Significance of A Mark Being Confusingly Similar to another?
- When reviewing a new application for registration, the examining attorney at the USPTO will compare the mark that you are seeking to register against the USPTO's trademark database to determine if the proposed mark potentially conflicts with any existing trademark. To determine whether a conflict exists, the trademark examiner must consider whether there is a “likelihood o…
Analyze Whether The Rejection Is Appropriate
- If your mark is rejected as being confusingly similar to an existing mark, overcoming the rejection may be a challenge. Before you attempt to overcome the rejection, first consider the marks in question. Ask yourself: “are the marks similar?” If you believe that they are not, in fact, similar, then attempt to articulate precisely how they differ. But it is important even at this early stage of anal…
Arguments to Make in Responding to The Rejection
- Even if the marks in question are quite similar or even identical, the differences in the goods and/or services associated with the marks may provide a basis for overcoming the likelihood of confusion rejection. If the marks in question are for dissimilar goods or services, then a good argument should be possible that a reasonable consumer would not be confused as to the origi…
What Is A 2(d) Refusal?
In order to qualify for registration, a trademark must be distinct. A mark that is distinct identifies and distinguishes the source of goods and/or services. Generally, a distinct mark is either a coined term, meaning one that doesn’t have a previously known meaning (for example: “SPOTIFY”), or an arbitrary term, which is a word or …
Dupont Factors
- A 2(d) office action indicates that the examining attorney thinks that the buying public may confuse the source of your goods or services with another due to similarity between marks. In In re E.I. du Pont de Nemours & Co., the United States Court of Customs and Patent Appeals sets out thirteen factors (known as the “DuPont Factors”) that an examining attorney must consider whe…
Responding to 2(d) Refusals
- Similarity of the Marks The first DuPont factor considers the similarities of the marks as a whole (including appearance, sound, meaning, and commercial impression). This means that an examining attorney can’t simply zero in on the appearance of a mark and disregard its commercial impression. Although trademarks must be viewed as a whole, one basic rule is that the examinin…
Losing Arguments
- While there are a variety of winning arguments you can make, there are certain arguments that will never be considered strong enough to alleviate confusion. The examining attorney will never hear matters that constitute an attack on a registered mark because a response to a 2(d) refusal is not the appropriate forum. For example, if a company describes their goods or services broadly on t…
Conclusion
- There are many factors to consider when making the case against a likelihood of confusion refusal. Other factors that may be relevant include the fame of a prior mark, whether there is a valid consent agreement between an applicant and the owner of a registered mark, and the extent of any actual confusion. Keep in mind that each case is fact-specific: a determination that confu…
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