What is Section 2(d) Refusal - Likelihood of Confusion?

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Written by Tomas Orsula

Senior Trademark Attorney

If you received a Section 2(d) refusal for your trademark application, it means the USPTO is refusing your registration on the grounds of the likelihood of confusion with an earlier already registered trademark. This is one of the most common reasons for issuing an office action.

It's important to note that the use in commerce doesn't play a role here. Your mark can be active in commerce, while the earlier mark isn't yet, but what matters is the earlier filing date of the trademark application.

In the office action, the examiner will list all the earlier marks they deem similar to your mark and the factors they feel impact the similarity the most. Two marks can be viewed as similar due to various reasons, including visual similarity, similar commercial impression, similarity of goods/services offered, similarity of trade channels, etc. If you want to understand the concept of similarity in trademark law in more detail, you can read our Trademark academy article on Similarity search among existing trademarks.

The strategy to overcome a likelihood of confusion refusal depends on the similarity between your mark and the other mark(s) but can include:

  • Providing an explanation why the listed reasons for the perceived similarity don't apply,
  • Amending the list of goods and services to avoid the overlap in your and the other brand's offering,
  • Contacting the other party and asking if they wouldn't be willing to sign a co-existence agreement.

Since this type of office action is generally hard to overcome and requires a thorough preparation of a response (or a negotiation with the other trademark's owner), it's highly advisable to consult an experienced trademark attorney who can help you choose the best course of action and carry out the necessary steps to save your trademark.

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