In 2(d)eep: How to Effectively Respond to 2(d) Refusals
Alex Sandler | July 10, 2020
What is a 2(d) Refusal?
In order to qualify for registration, a trademark must be distinct. A mark that is distinct identifies and distinguishes the source of goods and/or services. Generally, a distinct mark is either a coined term, meaning one that doesn’t have a previously known meaning (for example: “SPOTIFY”), or an arbitrary term, which is a word or phrase that has no relation to the goods and/or services being sold (for example: “CAMEL” for cigarettes). A distinct mark may also be suggestive, which is a term that hints to the nature of the goods or services associated with the mark (for example: “DRI-FOOT” is suggestive for an antiperspirant for feet).
When you submit an application to register a trademark to the United States Patent and Trademark Office (USPTO), an examining attorney will review your application and check to make sure your mark is filed and categorized correctly, that it functions as an indicator of a brand, and that it doesn’t conflict with other registered trademarks or pending applications.
If the examiner has an issue with your trademark application, you will receive an office action. An office action informs you about any legal or procedural problems that will temporarily or permanently bar registration of your trademark. If the examining attorney believes that the trademark is so similar to an existing trademark registration or a prior filed application that consumers might be confused, the examining attorney will issue an office action under Section 2(d) of the Trademark Act, 15 U.S.C. 1052(d).
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A 2(d) office action indicates that the examining attorney thinks that the buying public may confuse the source of your goods or services with another due to similarity between marks. In In re E.I. du Pont de Nemours & Co., the United States Court of Customs and Patent Appeals sets out thirteen factors (known as the “DuPont Factors”) that an examining attorney must consider when determining whether a likelihood of confusion exists. See 476 F.2d 1357, 1360 (CCPA 1973). These factors are:
(1) the similarities between the marks,
(2) the similarities between the goods or services in association with the marks,
(3) the similarities of trade channels,
(4) whether the product or service requires careful purchasing,
(5) the fame of the prior mark,
(6) the nature of similar marks on similar goods,
(7) the presence of actual confusion,
(8) how much time has passed without actual confusion,
(9) the variety of goods on which a mark is used,
(10) whether a consent agreement for both parties to use the mark exists,
(11) the extent to which an applicant has the right to exclude others from using its mark,
(12) the extent of potential confusion, and
(13) any other relevant facts.
Some factors may be relevant in one case and irrelevant in another, and the relevant factors are not always given equal weight. The examining attorney will balance the relevant factors and determine whether your mark is eligible to be registered.
To effectively respond to a 2(d) refusal, the attorney representing the refused mark must consider each of the DuPont factors to develop a tailored argument as to why their client’s mark is not confusingly similar to existing applications and registrations. We’ll explore some of the most important DuPont factors so you can develop an understanding of what a substantive response looks like as well as a few examples of losing arguments.
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Responding to 2(d) Refusals
Similarity of the Marks
The first DuPont factor considers the similarities of the marks as a whole (including appearance, sound, meaning, and commercial impression). This means that an examining attorney can’t simply zero in on the appearance of a mark and disregard its commercial impression. Although trademarks must be viewed as a whole, one basic rule is that the examining attorney should focus more on the dominant (or source-identifying) portion of a mark when determining whether a mark is confusingly similar with another. This is because the dominant portion is most likely to have the biggest impact on consumers.
Although there is no test to identify the dominant portion of a mark per se, it is generally considered to be either a coined term, an arbitrary term, or the first word in a mark consisting of multiple words. So, in the case of the mark DELTA AIRLINES, DELTA would be the dominant portion, but in the case of the mark FASHION NOVA for clothing, it would be NOVA, not FASHION. If the dominant portion between two marks is the same, and the marks, when viewed as a whole, create similar commercial impressions, you will have a harder time arguing that a likelihood of confusion doesn’t exist.
If you receive a 2(d) refusal, you should initially make your best argument that the marks are dissimilar. Look to see if the dominant portions are dissimilar, if the marks are spelled differently, or if one has a distinct design, and then argue that confusion is unlikely because the marks convey distinct commercial impressions. For example, if you applied for a trademark registration for the mark “CAPITAL CITY BANK,” to be registered for a bank, the examiner might issue a 2(d) refusal because of the similarity with the registered mark “CITIBANK,” which is, of course, also a bank. In this case, you would want to argue that your mark conveys a distinct commercial impression because the dominant portion (Capital, as the first word) differentiates the marks. This would be an effective argument to make, and the applicant in Citigroup Inc. v. Capital City Bank Group, Inc., won, in part, as a result of this: the Federal Circuit found that “capital” gives the mark a distinct look and sound from Citigroup’s mark “CITIBANK.” See 637 F.3d 1344, 1351 (Fed. Cir. 2001).
In contrast, in a losing case, the Federal Circuit held that the marks “DETROIT ATHLETIC CLUB” for clothes and “DETROIT ATHLETIC CO.” for sports apparel are confusingly similar, in part because the first few words constitute the dominant portions of the marks and are identical. See In re Detroit Ath. Co., 903 F.3d 1297, 1303 (Fed. Cir. 2018). Although “co” and “club” technically differentiate the marks, they are descriptive words. See id. The Trademark Trial and Appeal Board (TTAB) and the Federal Circuit have long held that adding descriptive words isn’t sufficient to remove confusion.
Consider this example of a successful office action response where the applicant argued that confusion is unlikely between the mark “PROTECT YOUR PASSION SPOILED LUXURIES” with the mark “SPOILED” because the marks are distinct:
“In this case, the first words in the Applicant’s Mark is “PROTECT YOUR PASSION.” The first words of Applicant’s Mark, PROTECT YOUR PASSION, could not be more different in sight and sound from the Cited Mark, SPOILED. It also stands to note that “PROTECT YOUR PASSION SPOILED LUXURIES” and “SPOILED” do not look alike. One mark has nine and the other has one syllable. The two marks also do not sound alike, other than the fact that they both contain a duplicate word. Thus, it cannot be said that the two marks give a similar commercial impression.
Moreover, in Applicant’s design mark, the words PROTECT YOUR PASSION are at the top of the Mark, and the words SPOILED LUXURIES are at the bottom. Because English is read top to bottom, the consumer is more likely to perceive the words PROTECT YOUR PASSION as the dominant portion of the mark rather than the word SPOILED.
Moreover, the cited mark is a word mark consisting of one word; Applicant’s mark is five words plus a distinctive design. Thus, a consumer of the services is unlikely to confuse the two because the overall commercial impression of the marks is completely different.”
This argument was persuasive because the applicant noted several differences between the marks, most importantly that “PROTECT YOUR PASSION SPOILED LUXURIES” is distinct from “SPOILED” because the dominant portions of the mark are different. In addition, one mark has a distinct design while the other does not, and one has nine syllables while the other has one. When making the argument that your mark is not confusingly similar to a registered mark, be sure to discuss all of the differences. The weight given to each factor is not equal from case to case; it varies. So, the more differences you can point out, the stronger your argument will be.
The Trademark Manual Examining Procedure (TMEP) guide under §1207.01(b) has more information about how to evaluate similarities between marks.
Similarity of the Goods and/or Services
The second DuPont factor addresses the similarity between the goods or services. First, keep in mind that the examining attorney will not look beyond the four corners of your application to identify your goods or services. This means that if you try to register a mark for “mobile apps,” but your product is really limited to “mobile apps pertaining to travel services,” the examining attorney will only consider what is actually listed in your application (“mobile apps”).
In addition, the more similar your mark is with another, the less similar the goods or services in association with the marks have to be in order for an examining attorney to determine that a likelihood of confusion exists. The goods or services do not even have to be identical if they are marketed in a way that suggests that they come from the same source. For example, if you try to register “SARGENTO” for bread and there is a pre-existing identical mark for cheese, the examining attorney may find that a likelihood of confusion exists. Why? The goods are complementary items, sold by the same retailers, and often they are sold near each other in stores. That means it’s reasonable to believe that consumers will see both marks and believe the goods come from the same source. On the other hand, if the similarity between the goods or services is not evident, the burden of establishing relatedness is harder to satisfy. SARGENTO auto parts would be less likely to cause confusion.
If an examining attorney refuses to register your mark on the grounds that the goods and services are related, you should look for evidence to show that the industries are separate and argue that the goods and services are dissimilar. This will help you make the case that confusion is unlikely. In re Coors Brewing Co. is an illustrative case, where the Federal Circuit held that restaurant services and beer are not sufficiently related. 343 F.3d 1340, 1346 (Fed. Cir. 2003). The Court relied on evidence showing that a very small portion of restaurants actually brew their own beer or have their own private labels, and very few trademarks were registered for both restaurant services and beer. See id. This kind of evidence shows that the industries often do not overlap, and consumers are less likely to assume that the restaurant “Blue Moon” is associated with the beer “Blue Moon.” See id.
Here is an office action response where the applicant successfully argued that diamond jewelry and watches are sufficiently different, due to a lack of overlap between the goods, and therefore confusion between similar marks is unlikely:
“Applicant is seeking to register its mark for timepieces and chronometric instruments, whereas Registrant has its mark registered for precious stones; cut diamonds; jewellery, excluding watches, containing cut diamonds. On their face, the goods of Applicant appear to be distinct from the goods of Registrant in terms of their character and use. In addition, Applicant’s website clearly illustrates that Applicant sells timepieces and chronometric instruments. See Exhibit C. Registrant, on the other hand, describes itself as “a renowned world leader in the field of straight edged diamond manufacturers and widely known for its innovative special cuts.” See Exhibit D. Additionally, Registrant’s diamonds are “perfectly designed to be inlaid into rings, necklaces, and bracelets.” See id. Neither party manufactures, sells, or markets the other’s products.
Registrant’s goods are a feature of a consumer jewelry product; the cut diamonds are not likely to be sold on their own. Diamond cutting is a separate process that companies, such as Registrant, specialize in and the goods attained from the process are purchased by sophisticated consumers. Likewise, the consumers purchasing Registrant’s goods have a specific diamond shape in mind, such as the METEOR® cut. Registrant’s goods are, therefore, generally custom made to a specific consumer’s preference. See Exhibit D.
Although both goods are found in the jewelry industry, this industry is enormously broad, so this commonality simply is too tenuous of a connection upon which to find that the goods are commercially related. The goods are non-competitive and clearly have significant differences in utility and essential characteristics. Further, Registrant’s identification specifically excludes watches, and Applicant produces and sells completed timepieces and chronometric instruments.
Registrant’s and Applicant’s goods are, therefore, not competitive, overlapping, or related in any way, as Applicant does not manufacture, sell, or market precious stones and cut diamonds. Accordingly, Applicant’s goods and the cited goods are clearly different and are not similar enough to create a likelihood of confusion in the minds of the consumers.”
This argument was persuasive because the applicant pointed out several differences to show how the two goods are unrelated, namely that: (1) cutting and sellings diamonds requires a specialized knowledge that is very different from selling watches, (2) consumers often customize diamond jewelry, but not watches, and (3) the registrant described itself as a seller of rings, necklaces, and bracelets, not as a seller of watches. The differences between the goods substantially outweigh the similarity that the goods are both jewelry. The applicant also argued that the relevant consumers are sophisticated, which plays an important role in a likelihood of confusion determination. More to that in a moment.
Alternatively, you can also argue that goods or services are dissimilar by showing evidence of marks coexisting on the register for the goods or services at issue. In one key case, the applicant in In re Thor Tech, Inc. sought registration of the mark “TERRAIN” for towable trailers. The examining attorney refused registration on account of an identical registered mark for trucks. See 113 U.S.P.Q.2D (BNA) 1546, 1546 (TTAB 2015). The TTAB reversed the refusal based on evidence of fifty third-party registrations showing that similar marks had been separately registered for trucks and trailers, which showed that businesses in these two industries believe that their goods are distinct enough, and therefore confusion is unlikely. See id at 1549. The coexistence of marks for trucks and trailers also suggests that consumers are aware that these goods are offered by different companies. See id.
For more information about related goods and services, take a look at TMEP §1207.01(a).
Another kind of evidence that will help you prove that confusion is unlikely is showing that the goods or services require a consumer to engage in careful purchasing (the fourth DuPont factor). Niche and expensive products suggest careful purchasing. In these cases, consumers are more likely to recognize differences between trademarks, and they’re more likely to be especially aware of who they are purchasing from. If an examining attorney refuses to register your mark because there is a similar mark for related goods, and it’s pertinent, you can argue that confusion is unlikely because the relevant consumers are sophisticated.
This factor played a key role for the applicant in In re N.A.D., Inc., in which the court found that confusion was unlikely between similar marks for medical equipment, based, in part, on the evidence showing that only consumers who have technical knowledge and would exercise great care would purchase these types of goods. See 754 F.2d 996, 999 (Fed. Cir. 1985). Conversely, impulse purchases of inexpensive items show just the opposite. If you cannot show that the average consumers in the class are sophisticated purchasers, you’re out of luck. Consider this: if you wanted to register a mark for champagne and there is a similar mark registered for sparkling wine, you’d have a hard time arguing that confusion is unlikely due to the nature of the beverages. Even though champagne and sparkling wine can be expensive, many brands sell for less than $25 a bottle, and consumers often purchase both beverages with little care or prior knowledge: most do not spend time researching options.
Here is an example of an office action response where the applicant successfully argued that confusion is unlikely between “GHOST” and “GHOSTWORKS” for motorcycle helmets and customizable active gear, in part, because the consumers purchasing the goods are sophisticated:
“Moreover, even if and to the extent, for sake of argument, the applicant’s goods and registrant’s services might theoretically be provided to overlapping classes of consumers, confusion is still unlikely as the only plausible overlapping consumer group would be professional motorsports consumers, i.e., race car teams and drivers, but they would all be sophisticated business consumers who can be expected to exercise a careful degree of discrimination in making professional purchase decisions. Indeed, even “stock” uncustomized motorsports helmets can sell for prices well in excess of $1000 per helmet, such that the purchase of such helmets necessarily involves a high degree of care, research and discrimination. Hiring an outside firm to custom design such a helmet would only substantially increase that cost. As such, these consumers are decidedly less likely to be confused merely by similarities as between applicant’s and registrant’s marks when the goods and services themselves are so different.”
This was persuasive because the applicant argued that sophisticated purchasers would be the only overlapping consumers for the involved goods. Motorcycle helmets are expensive, and only trained riders would purchase a motorcycle helmet from the applicant and the registrant. Given the circumstances, it’s very unlikely that there would be source confusion.
If a mark is weak, it will be less likely to bar the registration of another mark. One way to demonstrate that a mark is weak is with considerable evidence of third-party use for the same or similar goods, which commonly falls under the sixth DuPont factor. This suggests that a mark is frequently used in an industry and has a well-recognized descriptive or suggestive meaning. The Federal Circuit and the TTAB have recognized that weak marks are entitled to less protection than a coined term and are less likely to cause confusion.
If the examining attorney refuses to register your mark on the grounds that it is confusingly similar to another mark, you should look for substantial evidence of third-party use of similar marks for the same or similar goods. Generally, evidence of a small number of third-party registrations is not entitled to much weight in determining the strength of a mark, but showing evidence of extensive third-party use is really valuable. By showing that the USPTO has routinely allowed for registration of similar marks for related goods, you can then argue that your mark is weak, and therefore less likely to cause confusion. For example, in In re FabFitFun, Inc., the TTAB held that the mark “I’M SMOKING HOT” for cosmetics and personal care items and the mark “SMOKIN’ HOT SHOW TIME” for cosmetics was not likely to cause confusion. See 127 U.S.P.Q.2D 1670, 1675 (TTAB 2018). The court noted that over ten third-party registrations using the term “smoking hot” suggests: (1) that the term is highly suggestive of the goods, and (2) that consumers are aware that many different companies use this phrase and will look to other parts of the marks to distinguish them. See id.
Here is an example of an office action response where an applicant successfully argued that confusion is unlikely between the marks “BLUEPRINTER” and “BLUEPRINT” due to extensive third-party use of the mark “BLUEPRINT”:
“The examining attorney has refused registration because applicant’s mark BLUEPRINTER for computer software for product development namely for gathering customer and competitor data in planning new product objectives so resembles the mark ‘Blueprint’ in U.S. Registration No. 3131045 for ‘general interest magazine’ as to be likely to cause confusion.
Applicant’s response is that the marks as a whole are different. A search of the trademark records indicate that there are 194 ‘live’ records for the mark ‘blueprint,’ for a variety of goods and services, including 29 for ‘blueprint’ alone. The number of ‘blueprint’ records indicates that the mark ‘blueprint’ is in fact a weak mark. Therefore any variation becomes distinguishable. Further, there is no likelihood that applicant’s mark BLUEPRINTER will become confused with ‘Blueprint.’ Applicant’s goods are sold, not to the general consumer, but to sophisticated consumers that do product development and easily distinguish applicant’s products from those sold by others. Therefore reconsideration and withdrawal of the rejection is respectfully requested.”
The examining attorney initially refused the registration because the marks are similar and the goods are similar, as the registrant’s general interest magazine could include information about the applicant’s product. This argument was persuasive because the applicant showed evidence of a large number of third-party registrations using the mark “BLUEPRINT.” Because the marks are so similar, it’s possible that the applicant wouldn’t have overcome this refusal by only pointing to a few third-party registrations. However, the evidence was given significant weight in the examining attorney’s decision to register the mark because it showed that the mark is commonly used and very weak.
While there are a variety of winning arguments you can make, there are certain arguments that will never be considered strong enough to alleviate confusion. The examining attorney will never hear matters that constitute an attack on a registered mark because a response to a 2(d) refusal is not the appropriate forum.
For example, if a company describes their goods or services broadly on their trademark registration, you cannot bring in evidence to show that the company only caters to a specific class of consumers. If a registration describes goods or services broadly, the USPTO will presume that the goods or services move through all normal channels of trade. So, for example, you cannot bring in evidence to show that a social club (bearing a similar mark as yours and registered for all athletic apparel) only sells apparel to club members through its gift shop, and therefore confusion with your online athletic clothing store is unlikely. An examining attorney could not assume that the club will never sell clothes online or through third-party distributors when it is registered for all athletic clothing goods. The USPTO will not accept arguments that seek to limit a registered mark.
There are many factors to consider when making the case against a likelihood of confusion refusal. Other factors that may be relevant include the fame of a prior mark, whether there is a valid consent agreement between an applicant and the owner of a registered mark, and the extent of any actual confusion. Keep in mind that each case is fact-specific: a determination that confusion is unlikely may be appropriate in one case even when the marks are similar and the goods are related because one or more factors outweigh these factors. You should consider all of the DuPont factors and identify the relevant ones for which you have evidence. Once you’ve identified the relevant factors, balance the factors and determine whether they weigh in favor of a likelihood of confusion. With the right evidence and legal theory, you can convince an examining attorney that your mark is not likely to cause confusion and that your application should proceed.