Office Action Roadmap: Navigating Likelihood of Confusion Refusals from the USPTO
Introduction:
During the trademark application process, the United States Patent and Trademark Office (USPTO) regularly issues office actions. It is not uncommon for office actions to include likelihood of confusion refusals, which can pose significant challenges to obtaining a trademark registration. A likelihood of confusion refusal occurs when the USPTO determines that your applied-for-mark is confusingly similar to an existing registered or pending mark, potentially leading to confusion among consumers. In this blog post, we will share insights and strategies for effectively navigating likelihood of confusion refusals from the USPTO. As a result, you can increase your chances of overcoming the refusal and successfully registering your trademark.
Understanding Likelihood of Confusion:
Likelihood of confusion is a critical concept in trademark law. It refers to the possibility that consumers might be confused or deceived about the source of goods or services due to similarities between marks. The USPTO examines trademark applications to ensure that new marks do not create confusion with existing registered or pending marks. When the USPTO identifies a likelihood of confusion, it will issue an office action refusing registration.
To illustrate, the owner of U.S. Application Serial No. 86760527 for the mark 8-BIT ALEWORKS to identify "beer" received an office action on January 4, 2016. The office action contained a likelihood of confusion rejection. Specifically, "[r]egistration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 3765233, 4564603, 4564602." The marks identified in the three registrations were 8-BIT VINTNERS, 8 BIT BREWING COMPANY, 8 BIT BREWING COMPANY and design."
Key Factors in Likelihood of Confusion Refusals:
To navigate likelihood of confusion refusals effectively, it is important to understand the factors the USPTO considers. These factors include:
a. Similarity of Marks: The USPTO compares the proposed mark with existing registered or pending marks to assess the overall visual, phonetic, and conceptual similarities. The closer the resemblance, the higher the likelihood of confusion.
b. Similarity of Goods or Services: The USPTO evaluates the relatedness of the goods or services associated with the marks. If the goods or services are similar or closely related, it increases the likelihood of confusion.
c. Strength of the Prior Mark: The USPTO considers the strength of the prior mark, such as its distinctiveness, reputation, and recognition in the marketplace. Stronger marks enjoy broader protection and are more likely to create confusion.
d. Market Channels and Consumers: The USPTO examines the channels of trade and target consumers for the goods or services. If the goods or services are distributed through the same channels or targeted at the same consumer base, it raises the likelihood of confusion.
Regarding 8-BIT ALEWORKS and its similarity with the cited marks, the office action stated that "[t]he marks are clearly similar as each contains the wording 8-BIT or the nearly identical 8 BIT as the first and most dominant element. The added literal portions in each mark are descriptive elements which are disclaimed and do not remove the overall similarity. Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression."
The office action continued by addressing the goods. It stated that "[t]he goods and/or services of the parties need not be identical or even competitive to find a likelihood of confusion. . . . The respective goods and/or services need only be 'related in some manner and/or if the circumstances surrounding their marketing [be] such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.' . . . Applicant provides beer. Registrations 4564603 and 4564602 are for beer. Thus, the goods are identical. Registration 3765233 is for wines. Various alcoholic beverages have been shown to be related goods for purposes of a Trademark Act Section 2(d) analysis. . . . In this case, beer and wine often originate from the same sources. . . . As these goods commonly originate from the same sources, the goods are related."
Often, likelihood of confusion refusals are limited to a comparison of the marks followed by a comparison of the goods/services.
Navigating the Likelihood of Confusion Refusal:
To navigate the likelihood of confusion refusals effectively, consider the following strategies:
a. Conduct Comprehensive Trademark Search: Before filing your trademark application, conduct a thorough search to identify potential conflicts with existing marks. This step helps you anticipate and address potential likelihood of confusion issues early on. In my experience, Applicants prefer knowing whether a likelihood of confusion refusal is possible or probable before filing an application rather than being surprised upon receiving an office action.
b. Analyze the Office Action: Carefully review the office action to understand the USPTO's specific concerns regarding likelihood of confusion. Pay attention to the cited marks, goods or services, and the rationale provided by the examining attorney.
c. Assess the Strength of the Referenced Mark: Evaluate the strength and distinctiveness of the cited mark. If the cited mark is weak or descriptive, it may be easier to argue against a likelihood of confusion refusal. Returning to our 8-BIT ALEWORKS example, our response may be easier to overcome the refusal if there are dozens of 8-BIT or similar marks used in connection with beverages, especially alcoholic beverages. The downside to a "weak mark" argument, however, is that it is harder for you to assert your trademark rights against third-parties because they can make a similar argument in support of their use and/or registration.
d. Distinguish Your Mark: Emphasize the unique aspects of your mark that differentiate it from the cited mark. Highlight distinct design elements, phonetic differences, or conceptual dissimilarities that diminish the likelihood of confusion.
e. Provide Evidence of Coexistence: If there are instances of coexistence between similar marks in the marketplace, gather evidence to support your argument. This evidence can include coexistence agreements or market research demonstrating consumers' ability to distinguish between similar marks.
f. Amend the Application: Consider amending the application by disclaiming certain elements or limiting the goods or services associated with the mark. Narrowing the scope of the mark can address specific concerns and decrease the likelihood of confusion.
g. Craft a Persuasive Response: Develop a well-structured, concise, and persuasive response to the office action. Address each concern raised by the examining attorney, provide supporting evidence, and present compelling arguments to counter the likelihood of confusion refusal.
Seek Professional Assistance:
Responding to a likelihood of confusion refusal can be complex and challenging. Consider seeking assistance from a trademark attorney experienced in handling office actions. A knowledgeable attorney can provide valuable guidance, assist in analyzing the cited marks, develop strong legal arguments, and increase the likelihood of a successful response.
Conclusion:
Navigating the likelihood of confusion refusals from the USPTO requires a strategic and informed approach. By understanding the factors involved, conducting comprehensive trademark searches, analyzing the office action, and crafting persuasive responses, you can overcome these refusals and successfully register your trademark. Seeking assistance from a trademark attorney can significantly enhance your chances of success. With a proactive and diligent approach, you can navigate the likelihood of confusion rejection effectively and secure the valuable trademark protection your brand deserves.
For reference, the 8-BIT ALEWORKS application discussed above was the subject of the TTAB's ex parte proceeding In re 8-Bit Brewing LLC, Serial No. 86760527 (T.T.A.B. Oct. 30, 2017).
