Overcoming a likelihood of confusion rejection issued by the United States Patent and Trademark Office (“USPTO”) can be one of the most difficult things to accomplish in the entire US trademark application process. Under Section 2(d) of the Trademark Act, the USPTO is legally obligated to refuse registration of your trademark if it’s likely to cause confusion with a mark in an existing registration. If there’s a conflicting mark, the examining attorney in charge of reviewing your trademark application will send you a trademark office action explaining in detail why confusion is likely. If you don’t file a response by the deadline, your application will go abandoned and you’ll have to begin the trademark process all over again (unless you’re eligible to file a Petition to Revive).
How is Likelihood of Confusion Determined?
In order to attempt to overcome a likelihood of confusion rejection, you need to understand what led the examining attorney to issue such a rejection in the first place. Generally speaking, the examining attorney probably focused on the following two factors:
- The degree of similarity between the marks in terms of appearance, sound, meaning, connotation, and commercial impression
- The degree of relatedness or similarity between the products/services listed in your application and those listed in the cited registration
Now, most likelihood of confusion refusals are not cut and dried. The question of whether one mark is likely to cause confusion with another can be fairly complex and oftentimes quite subjective. For example, if you apply to register JUMPING JACK for “shirts,” and there’s already an existing trademark registration for JUMPING JACK for “electric generators,” the USPTO probably won’t reject your application since shirts and electric generators aren’t products that would generally be perceived as being similar, related, or emanating from the same source. But, what about JUMPING JACK for “shirts” and JUMPING JACK for “watches?” Or, JUMPING JACK for “shirts” and LEAPING JAK for “shirts.” In those instances, would there be a likelihood of confusion? In my opinion, reasonable people could reach very different conclusions as to whether confusion is likely or not.
What Are My Options for Overcoming a Likelihood of Confusion Rejection?
You essentially have four options for trying to overcome a likelihood of confusion refusal:
- Submit arguments and evidence against the rejection
- File a Petition for Cancellation against the cited registration
- Seek a consent and coexistence agreement with the owner of the cited registration
- Request suspension of your trademark application
Please keep in mind that one or more of these options may be unsuitable, unavailable, too risky, or simply too expensive to pursue depending on your specific set of circumstances. I urge you to consult with a trusted trademark attorney before choosing any one of these options so that you don’t find yourself dealing with an even bigger problem than the likelihood of confusion rejection you’re currently facing.
Option #1 – Submit Arguments and Evidence
One option is to submit arguments and evidence to attempt to persuade the examining attorney to withdraw the refusal. Of course, the evidence and arguments you choose to submit will vary greatly depending on the exact nature of the likelihood of confusion rejection. But, here are some types of evidence and arguments that are commonly submitted to try to change the examining attorney’s mind:
- The reasons why the marks are sufficiently distinct from one another in terms of appearance, sound, meaning, connotation, and commercial impression
- The reasons why the products and/or services are not sufficiently related, similar, or overlapping (along with relevant evidence)
- Evidence tending to demonstrate the inherent commercial and/or conceptual weakness of the cited mark
- Active third-party registrations for similar trademarks that already coexist with the cited mark
- Evidence showing third-party use of similar trademarks for related or similar products/services
If the examining attorney finds your evidence and arguments persuasive, the likelihood of confusion rejection will be overcome. If not, then the examining attorney will issue a final office action, at which point you can file a Request for Reconsideration, a trademark appeal, or perhaps investigate whether one of the following options might be a suitable course of action.
Option #2 – File a Petition for Cancellation
Filing a Petition for Cancellation against the cited registration could be a good option if you believe there are valid legal grounds for canceling the registration. A trademark cancellation is brought in the Trademark Trial and Appeal Board (“TTAB”) for the purpose of challenging the right of the trademark registration’s owner to maintain the registration. There are many available grounds for cancellation of a registration, including:
- Abandonment of the registered mark
- Non-use of the registered mark
- Priority of use and likelihood of confusion
- The registered mark is merely descriptive
- The registered mark fails to function as a trademark
- Fraud on the USPTO in the procurement of the registration
However, please note that if the cited registration is over five years old, some of these grounds (and many others) are no longer legally available as grounds for cancellation.
If the TTAB ultimately rules in your favor, or if the owner of the registration doesn’t file an answer to the Petition for Cancellation, then the registration will be canceled and the likelihood of confusion refusal will be overcome. If an answer is filed, the parties will sometimes voluntarily enter into a negotiated consent and coexistence agreement (see Option #3) to amicably resolve the cancellation and to overcome the likelihood of confusion rejection.
Although filing a Petition for Cancellation can frequently result in overcoming a likelihood of confusion rejection, there can be very significant risks and costs associated with choosing this option. As such, I strongly recommend that you seek the advice and guidance of an experienced trademark attorney before embarking down the cancellation path.
Option #3 – Seek a Consent and Coexistence Agreement
Another option for overcoming a likelihood of confusion rejection is to contact the owner of the cited registration to see whether the owner would be willing to consent to the use and registration of your trademark. This type of agreement is often referred to as a “consent and coexistence agreement” because the parties are (1) mutually agreeing to coexist with one another in the marketplace, and (2) consenting to the use and registration of each other’s respective marks. The consent and coexistence agreement is then submitted to the examining attorney for review and consideration. If the examining attorney accepts the agreement, then the likelihood of confusion refusal is overcome. If not, then the examining attorney will issue an office action explaining why the agreement is insufficient. In order to increase the chances of the examining attorney accepting the consent and coexistence agreement, it’s extremely important to understand what the examining attorney is typically looking for in such an agreement so that it can be properly drafted by the parties or their attorneys.
As with filing a Petition for Cancellation, there can be very significant risks in contacting the owner of a registration and asking for consent. Therefore, I strongly encourage you to speak with a trademark lawyer before making any contact whatsoever with the owner of the cited registration.
Option #4 – Request Suspension of Your Trademark Application
If the cited registration is due for a Section 8 Declaration of Use, Section 71 Declaration of Use, or Section 8 and 9 Renewal, and the registration is currently in the grace period for the owner to file one of these documents, then it’s probably wise to request that the examining attorney suspend action on your trademark application pending whether the owner files such document or not. If the owner doesn’t file the required document before expiration of the grace period, then the registration will be canceled and the likelihood of confusion rejection will be overcome. On the other hand, if the owner does file the required document before expiration of the grace period, and the document is accepted by the USPTO, then you’ll have the opportunity to explore one or more of the three options discussed earlier.
Let Me Help Overcome a Likelihood of Confusion Rejection
I’m experienced US trademark attorney Morris Turek. I’ve successfully dealt with dozens of likelihood of confusion rejections in a variety of different ways throughout my long career. It would be my pleasure to carefully review your office action and to discuss with you any viable options and strategies you may have for overcoming the likelihood of confusion rejection. If you’d like a completely free consultation, please give me a call at (314) 749-4059, shoot me an email at morris@yourtrademarkattorney.com, or send me a message through my contact form (below). I look forward to speaking with you.