How to Use Alt Legal’s Section 2(d) Trademark Watch Service to Generate New Business and Impress Your Clients
Alt Legal Team | February 15, 2022
This article was originally published on December 30, 2020, and republished with updates on February 4, 2022 and on February 15, 2022.
We are excited about the release of §2(d) Trademark Watch, the latest addition to our suite of software for IP professionals. §2(d) Trademark Watch complements our core IP docketing software by tracking potential infringement in the earliest stages of the trademark application process. When the USPTO determines that an application is confusingly similar to an existing registration or pending application, the examiner will issue an office action citing likelihood of confusion pursuant to §2(d). The examiner will cite specific registrations or prior-filed applications as the sources for likelihood of confusion. The examiner only notifies the new trademark applicant; they never notify the owner or applicant of the mark that has been cited. This means you may never know that someone applied to register a mark that may infringe your client’s trademarks.
With Alt Legal’s §2(d) Trademark Watch, you’ll receive email notifications any time one of the marks on your docket is cited in an office action referencing §2(d). This means you’re going to learn about a potentially infringing mark before the mark is even published for opposition. The email notification will provide direct links to the relevant office action, the confusingly similar application, and your cited matter in TSDR, all in a user-friendly format that you can easily forward to colleagues or clients. The email will also include all of your marks previously cited for likelihood of confusion that have now been published for opposition in the Official Gazette.
In addition, we will send you weekly and monthly digest emails containing a summary of how many office actions were reviewed, how many cited §2(d), and how many and which of your docketed marks were cited. Also, weekly and monthly digests will detail which previously cited marks have been published for opposition in the Official Gazette. In addition to this information specific to your docketed marks, you’ll also receive notification of all USPTO marks cited in reference to §2(d) and all previously-cited marks that have now been published for opposition.
Learning of potentially infringing marks at this very early stage in the trademark application process gives you the ability to vigorously protect your clients’ trademark rights and demonstrates the additional value you provide. Any time you can proactively reach out to a client about potential infringement, it’s an excellent opportunity to strengthen client relationships and potentially even secure more business for your firm. It shows your clients that you are paying attention to them, actively monitoring their valuable IP, and proactively developing strategies to overcome potential infringement. Clients appreciate when their attorneys are looking out for them and can show expertise in dealing with complex processes before the USPTO.
Below you’ll find a step-by-step plan for handling notifications from Alt Legal’s §2(d) Trademark Watch so that you can effectively respond to potential infringement.
Step One: Read the Office Action in Question
We have read through, categorized, and processed thousands of office actions in order to teach our machine-learning algorithm how to read and understand office actions and to find the data you need. However, office actions and the examiners who write them sometimes deviate from standard formats. Start by reading the citation to verify that your client’s mark is the source of the likelihood of confusion.
Step Two: Perform Initial Research and Inform Clients and/or Colleagues
Before notifying clients and/or colleagues of the §2(d) citation, you’ll want to do some quick research to assess the situation. Use the report from Alt Legal’s §2(d) Trademark Watch, along with links to the office action, the cited application, and your cited matter in TSDR, as well as a cursory internet search to determine whether the §2(d) citation is worth passing along with some preliminary information to a client.
When you inform your clients and/or colleagues, you can send the user-friendly report from Alt Legal along with this sample language:
“I received notice from one of our service providers of ABC company’s application to register the mark X, and think this may be of interest in view of your trademark rights in mark Y. With your permission, I can conduct additional analysis into this potential risk and provide a report with options for proceeding.”
After receipt of the client’s instructions to proceed, you can proceed to Step Three where you will dig in deeper and provide a more comprehensive lay of the landscape to your client.
Step Three: Research and Assess the Situation
Once you’ve gotten your clients’ permission to proceed, you can conduct further research to assess the situation.
1. Is your client’s mark the subject of a federal trademark registration or application?
-If your client’s mark is registered, your client may possess superior rights which may make challenging the application more straightforward.
2. Is the refused application filed as a 1(a) or 1(b) application?
-If the refused application is filed under 1(b) and your client has a 1(a) application or a registration, your client may have superior rights. It’s important to recognize that even if the refused application was filed under 1(b), the mark may already be in use. This can happen for a variety of legitimate reasons, one being that the applicant was in a rush to get the application on file and didn’t have a specimen handy.
-If the refused application is filed under 1(b) and your client’s application is a 1(b) application, your client may still have superior rights; however, since neither party is currently using the mark in commerce, there may be some room for the other party to argue that their use began before your client’s use.
-If the refused application is filed under 1(a) and your client also has a 1(a) application or a registration, your client may have superior rights, however, you will need to compare the first use dates on both the newly-filed application and your client’s application or registration. Look at both the first use in commerce dates and the first use anywhere dates to determine if the newly-filed application specifies a date earlier than your client’s first use dates. If the applicant claims an earlier date, this could be problematic if the applicant overcomes its refusal. Your client needs to tread lightly and be careful not to jeopardize their own potentially junior rights.
-If the refused application is filed under 1(a) and your client has a 1(b) application, this could be problematic as the applied-for mark may have a priority claim to the mark based on use in commerce. You will have to do some research to determine if the mark is actually in use and if the dates claimed on the application are accurate.
-Additional strategy considerations may be needed if the refused application is based on a foreign application or registration (Sections 44(d) or 44(e)) and US designations of an international registration under the Madrid Protocol (Section 66(a)).
3. Compare the marks, the respective goods/services, and the examiner’s assessment as to why they are deemed confusingly similar. Conduct an internet search for the mark owner and determine if the mark is currently being used to help bolster your understanding of the mark and the way in which it is being used. Look to see who the mark owner is; is it a company or an individual? If it’s a company, is it new or established? Where is the business located? Does it have other marks? Look for pages and references on social media as well as apps to gain a fuller understanding of the mark and owner.
Next, compare the marks for likelihood of confusion based on the DuPont factors. The examiner will have already performed a similar analysis in the office action, and you may ultimately agree with their assessment. Nevertheless, it is important to conduct your own analysis since you have first-hand knowledge about your client’s mark and their business that the examiner may not fully understand. Consider all of the DuPont factors to make a determination if there is likelihood of confusion:
Similarity of the marks;
Similarity and nature of the covered goods and services;
Similarity of established trade channels;
Conditions under which, and buyers to whom, sales are made;
Fame of the prior mark;
Number and nature of similar marks in use on similar goods;
Nature and extent of actual confusion;
Length of time during, and conditions under which, there has been concurrent use without evidence of actual confusion;
Variety of goods on which a mark is or is not used;
Market interface between applicant and the owner of the prior mark;
Extent to which applicant has a right to exclude others from use of its mark;
Extent of possible confusion;
Any other established fact probative of the effect of use.
If you conclude that the applied-for mark could cause confusion, you will need to develop an opposition strategy. If you conclude that the applied-for mark is unlikely to cause confusion, then you may explain to your clients or colleagues that there is no or low likelihood of confusion and set forth next steps, even if that means take no action and “wait and see.”
Step Four: Determine an Opposition Strategy or Decide to “Wait and See”
There are a number of ways in which you can approach an opposition strategy depending on the magnitude of the issue, your client’s priority rights to the mark, and the parties involved. When presenting opposition strategy options to a client, we recommend that along with whatever strategy you suggest, that you also suggest a “wait and see” approach, as discussed below. The decision of how to proceed is often guided by the client’s budget and what business intelligence you are able to gather about the applicant. For example, a pro se domestic applicant or a suspicious-looking foreign applicant may simply allow the application to abandon without incurring further expense in prosecuting the application to try to overcome the refusals. In other cases, it may be wise to get out in front of things, particularly in cases where the applicant is a known marketplace competitor.
File a Letter of Protest
A letter of protest is an informal procedure that allows third parties to bring to the attention of the USPTO evidence bearing on the registrability of a mark. According to the USPTO, your letter of protest is more likely to be accepted if you file it before the application is published. This is another reason why Alt Legal’s §2(d) Trademark Watch is an especially powerful tool: it gives you the ability to file a letter of protest before publication when it is more likely to be accepted.
In a letter of protest, you must:
Identify the grounds for refusal, in this case §2(d) likelihood of confusion.
Create a chart citing all prior pending applications and/or registrations that could support a likelihood of confusion refusal.
Submit factual, objective evidence relevant to the grounds for protest. Evidence must be succinct. Be sure to follow the specific rules regarding evidence and indexing, outlined in the article below.
Learn about the new procedures pursuant to the Trademark Modernization Act for filing a letter of protest in our article: Practical Tips for Filing a Successful LOP
Learn more about Letter of Protest evidence and indexing requirements: Provide Convincing Evidence for Successful LOPs
Learn more about filing a letter of protest in our article here.
Send a Cease and Desist Letter
An effective strategy is to send a cease and desist letter to the attorney of record listed on the trademark application. If there is no attorney listed, you may send the letter to the owner. Note that when sending a letter to a trademark owner as opposed to an attorney, the owner may be less sophisticated when it comes to legal terminology and understanding of trademark law, so you will need to use clear language and provide ample explanation. Depending on the situation, your tone can range from very stern and formal to light-hearted and funny. As long as the message is clear that you represent a trademark owner with superior rights and that you object to the use of the mark, a cease and desist letter can be an effective way to oppose the applied-for mark and open communications with the other party to resolve the issue amicably without involving the USPTO.
File a TTAB Proceeding
If the applicant is able to overcome the examiner’s refusal and the mark is published for opposition in the Official Gazette, you may file a Notice of Opposition with the TTAB within 30 days of publication. If you are already an Alt Legal customer, you can add the refused application to your docket and be notified if the applicant overcomes the §2(d) refusal and proceeds to publication so that you have time to prepare a Notice of Opposition.
Should you require additional time to prepare the Notice of Opposition, you may file a Request for an Extension of Time to Oppose within 30 days of the publication date. The Notice of Opposition contains a pleading, which should comprise a short, plain statement of the grounds for believing the opposer will be damaged by registration of the mark, namely, that the opposer has priority rights to the trademark based on first use dates. The opposer must also state the grounds for opposition, in this case, §2(d) likelihood of confusion.
Wait and See
A risky, but possibly reasonable approach given the totality of the circumstances is to recommend that your client take no immediate action in opposition. Since the examining attorney has already refused the mark, the applicant has the burden of overcoming the refusal. You may assess the situation and find that the applicant is unlikely to challenge the refusal. Perhaps the applicant is a serial filer or a trademark troll. Should you choose to pursue this option as part of your strategy, you can monitor the applied-for mark to see if the applicant overcomes the §2(d) refusal and proceeds to publication. If you are already an Alt Legal customer, you can add the refused application to your docket so that you’ll be notified if the applicant overcomes the §2(d) refusal. Should the applicant overcome the refusal, you may start preparing to file a Notice of Opposition if that falls under your opposition strategy.