Why Arguments Alone May Not Be Enough to Overcome a Likelihood of Confusion Refusal
Likelihood of confusion is a fancy way of saying that the trademark you applied for is too similar to an existing trademark registration. A Section 2(d) refusal is one of the most common rejections of trademark applications filed with the USPTO. In many situations, arguments alone will not lead to a successful registration. Also known as a trademark registration restriction, you may need to consider a Section 18 partial cancellation of a registered mark.
Need a wiser strategy to overcome a trademark likelihood of confusion rejection? Contact US patent and trademark attorney Vic Lin at vlin@icaplaw.com to explore smarter ways to get your mark approved and registered.
What is blocking your trademark from registration?
In many likelihood of confusion refusals, the problem is the relatedness of goods and services. For example, your application covers jewelry but the examining attorney says that your mark is confusingly similar to a registration covering clothing.
You can try to appeal to common sense, but will that be enough? Most trademark owners deal with selling goods or services, so they are familiar with how things work in the business world. And in this real world, you can argue that consumers would not be confused when they encounter marks on significantly different goods.
But that is how things work in the fictional world governed by the likelihood of confusion (LOC) standard. In this fantasy LOC world, you have to play by USPTO rules on what makes marks confusingly similar. Those rules make arguments about differences ineffective under certain circumstances.
Trademark Registration Restriction: Why go around an obstacle when you can simply remove it?
Wisdom in trademark registration strategies calls for the right tactics at the right time. Arguments alone might not be enough. Not every likelihood of confusion refusal can be defeated with statements about differences in the respective marks.
For example, the USPTO trademark examining attorney has rejected your mark for being too similar to a trademark registration. Let’s call that registered trademark the cited registration. As far as you can tell, the owner of the cited registration is using their mark only on certain products. The cited registration, however, covers more goods than what the owner is currently selling under the mark.
In this situation, merely arguing that your mark is different than what the owner is actually selling under the cited registration will not help. The trademark examining attorney does not care about what the registration owner is actually doing. Examiners care only about what is in the trademark registration.
Therefore, you may need to attack the cited registration instead of wasting time and money arguing against the refusal. So how do you effectively attack a trademark registration? You might not need to kill it. You may simply have to restrict the registered trademark.
Use Partial Cancellation to Make the Cited Registration Not Similar to Your Mark
Partial cancellation is a surgical tool that removes only a portion of a trademark registration. When used properly, it can be a highly effective strategy to overcome a likelihood of confusion refusal. Also known as a Section 18 cancellation, this precise attack is most effective under certain circumstances.
First, only certain goods or services in the cited registration overlap with the goods or services identified in your trademark application. Partial cancellation works only if there are a subset of overlapping items. The remaining goods or services in the blocking registration must not present a conflict with your application.
Second, there are substantial pieces of evidence to support removal of those overlapping items from the cited registration. For example, abandonment of the mark with respect to the overlapping goods or services may form the basis for filing a partial cancellation.
How do you partially restrict a blocking trademark registration to overcome a likelihood of confusion refusal?
Timing is key. You must file a timely partial cancellation against the cited registration while there is time remaining to respond to your Office Action. If necessary, you may need to request a 3-month extension of time.
Once the partial cancellation is filed, you may request suspension of your application pending the outcome of the cancellation. In other words, you are asking the USPTO to put your application on hold until the results of the Section 18 proceeding are determined.
If your partial cancellation is successful, the overlapping goods or services will be removed from the cited registration. You can then resume prosecution of your application and notify the examining attorney that the blocking goods or services in the cited registration have been removed.
