One of the most common refusals for trademarks is a Section 2(d) Likelihood of Confusion - Refusal.  

A Section 2(d) likelihood of confusion refusal is issued when there is already a registered trademark on the Register that the USPTO argues is confusingly similar to your trademark such that a consumer would get confused.

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Let’s first begin with how the USPTO decides to issue a Section 2(d) Likelihood of Confusion Refusal.

There are two parts to this determination.

The USPTO first considers the similarity of the marks themselves.

There are many ways that trademarks can be similar.  They could be identical, such as GOOGLE versus GOOGLE, or they could be phonetic equivalents, such as MACDONALD’S versus MCDONALD’S.

Trademarks can also be found to be similar when, even though they might not look or sound the same, they create the same MEANING to the consumer.

An example of this is TWO CATS versus DOS GATOS.  These trademarks look and sound different, but they have the same meaning.

Many consumers will see DOS GATOS and immediately think of the meaning of TWO CATS.

So, when we are considering similarly confusing trademarks, we have to keep in mind that there are many ways that trademarks can be similar.  They might be identical, they might be phonetic equivalents, or they might, through a combination of ways, convey the SAME meaning.

The USPTO then considers the similarity of the products and services between the trademarks.

It’s not enough just for the trademarks to be similar.  They also have to be selling or providing related goods and/or services.

So, let’s use an example.

Let’s say we are considering the trademark of KITTY SHENANIGANS versus CAT SHENANIGANS.  The marks are similar because they convey a similar meaning.

But, what if the trademark KITTY SHENANIGANS is for Kitty Litter, and the trademark CAT SHENANIGANS is for website development services?

Buying kitty litter feels VERY different from buying website development services.  If I’m buying kitty litter, I’m going towards a very specific aisle at a grocery store, whereas if I’m looking for someone to help me build a website, I’m most likely looking online or for referrals from friends.  

It’s very difficult to imagine a company that provides both kitty litter AND web site development services.

So, even though the trademarks seem similar in the first step, it would fail the second step because the goods and services aren’t related.  

Let’s use another example with the same trademarks, but KITTY SHENANIGANS is for t-shirts and CAT SHENANIGANS is for jewelry.  Are t-shirts confusingly similar to jewelry to cause confusion?

The best way to check is to use Google.  If you google jewelry and t-shirts, do you see a good deal of companies that provide both?  The answer is yes.  In fact, a ton of clothing brands also provide jewelry!

So, consumers that are shopping for clothing will very likely also come across jewelry in that same store.

In that case, the trademarks of KITTY SHENANIGANS and CAT SHENANIGANS are confusingly similar AND the goods are related.

So, now that you have a better idea of how the USPTO determines Section 2(d) Refusals for Likelihood of Confusion, you might be wondering:

How do I respond to a Section 2(d) Refusal?

The first part is to carefully consider the USPTO’s arguments, and decide whether you agree with the Refusal.

Remember that the trademarks don’t have to be identical to be found similar.  There are many ways for trademarks to be similar, including if they create the same meaning to customers.  

And, the goods or services also do not have to be identical. Rather, you look to see if the goods and services are similar or related.

So, take a step back and objectively look at the Refusal.  There will usually be some differences between the trademarks, but are they meaningful differences?   Like I mentioned previously, when you are considering whether the goods and services are related, Google is your friend!   When you google the goods and services, do you see a lot of examples of businesses or brands that sell or provide both your goods and services as well as the Registrant’s goods and services?  

If the trademarks are confusingly similar, and the goods and services are related, it will be very difficult to overcome this Refusal.

Now, assuming you don’t agree with the USPTO, you can respond with arguments against this Refusal.

Remember the two-part test that the USPTO uses to determine whether the trademarks are confusingly similar?  Here, you use that same test, but you would make arguments against the similarities.

So, let’s begin with the first part of the test: the similarity of the trademarks.

Carefully consider the trademarks and ask yourself what is different about the trademarks.

Some questions to ask:

• Do they have different meanings?  In other words, when a consumer looks at your trademark, and then looks at the registered trademark, would the consumer have different interpretations or meanings?
• Do they look or sound differently?
• Are there a lot of similar registered trademarks with the same words or designs selling related goods or services?  In that case, you can argue that the marks are diluted.  In other words, you’re saying that the USPTO has allowed many similar trademarks with similar words or designs to coexist as registered trademarks with related goods and services, so yours should be allowed to coexist as well!
• Does your trademark have a prominent design?  Does the registered trademark have a prominent design?

These are some of the questions to ask yourself when arguing that the trademarks are not similar.

Then, you’ll go to the second part of the test.  Here, you’ll carefully look at the goods or services in your application, and the goods and services in the registered trademark.

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Ask yourself: Did the USPTO show that these goods and services were similar?

To help answer this, look at the evidence provided by the trademark examining attorney.  Often the trademark examining attorney will attach evidence from brands that purportedly sell both the applicant’s and registrant’s goods and services.

Now, ask yourself: Does the evidence show persuasive examples of brands that sell both your goods and services AND the registrant’s goods and services?

If the USPTO used evidence from a “Big Box” store like Walmart, which sells MANY goods and services, this would not be persuasive evidence.  After all, Walmart sells almost everything!

On the other hand, brands that specialize in selling both your goods and services, as well as Registrant’s goods and services, would be more persuasive evidence.

You should also consider how many specific examples they provided.

For instance, let’s say I’m selling t-shirts in Class 25 and light bulbs in Class 11, and the Registrant is selling LED light fixtures in 11.  Well, let’s say the USPTO provides a few examples of the LED light fixtures being related to the light bulbs, but no examples of the LED light fixtures being related to the t-shirts.  That’s something I would point out in my Response!  In that case, you would be arguing that the Refusal shouldn’t apply to the unrelated goods of t-shirts in Class 25.

So, you’ll want to ask yourself whether you can argue that the USPTO didn’t provide persuasive evidence that the goods and services are related.

One final note.

Some applicants receive a PARTIAL REFUSAL for a Section 2(d) Refusal Likelihood of Confusion.  This means that the USPTO is only applying the Section 2(d) Refusal against certain goods and services, or certain Classes, in your application.

Here, the Office Action should clearly specify which goods or services, or which Classes the Refusal applies to.  So, what that means is that the Refusal will NOT apply to the goods and services, or Classes that are NOT referenced.

To recap, a Section 2(d) Refusal is a common Refusal that unfortunately acts as a complete bar to registration.  

You have to objectively consider whether you agree with the USPTO, based on the two-part test described above.  Depending on the trademarks, this can be a very challenging Refusal to overcome.  If you disagree with the USPTO’s determination, and choose to Respond to this Refusal, you should use the same two-part test to consider the ways in which you believe the trademarks, as well as the goods and services, are dissimilar.