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Overcoming a §2(d) Likelihood of Confusion Office Action Part I: Securing a Trademark Registration on the Principal Register

M.J. Williams | February 02, 2022
6 min read

M.J. Williams is a partner at Wissing Miller LLP, a boutique intellectual property firm in New York City. She provides counsel and representation on trademarks and copyrights to creatives and creative businesses, from start-ups to global corporations. She also supports reporters, media companies, and activists with Freedom of Information matters, frequently litigating against law enforcement agencies for release of public records.

§2(d) Likelihood of Confusion refusals are often some of the most difficult hurdles to overcome when prosecuting a USPTO trademark application. This series of articles will describe in detail three different scenarios before the USPTO where IP attorney M.J. Williams came up with successful and creative solutions to overcome the examiners’ refusals. Set forth in Q&A format and responding to questions from Alt Legal, M.J. breaks down the process, highlights successful strategies that she’s used, and provides practical tips for all practitioners.

Check out each of the articles in this series:

  • Part 1: Securing a Trademark Registration on the Principal Register (read below)

Background – Application and the Client

The client proposed the mark SAVVY to be used in connection with its new business, a patient-owned cooperative, that creates avenues for patients to directly influence innovations in medical research, product design, and treatment. M.J. started working with the client after they had already become emotionally and financially invested in the mark, so even though M.J. immediately identified a concern that the mark was very commonplace, the company was determined to try and register the mark. The client decided to file two applications – a word mark and a design mark for a range of services to foster the medical field’s collaboration with patients and the cooperative members’ exchange of information with each other.

After filing the applications, the examiner issued office actions for both the word and design marks, citing a §2(d) likelihood of confusion partial refusal applying to certain services listed in the application. The examiner cited three registered marks:

SAVVI – for “Advertising and advertisement services across the nation for local merchants, retailers and service providers; advertisement via mobile phone network and Internet websites” in Class 35, among other services.

SAVI SISTERS and SAVI SISTERS (word and design) – for “Providing an online network service that enables users to share data and information in the fields of breast health, breast cancer, cancer recovery and survival” in Class 42, among other goods and services.

Here are links to M.J.’s responses:

Before we get into discussing the office action response, how do you approach a discussion with a client when they come to you with a mark that will probably be refused due to likelihood of confusion?

Knowing your client and their business is paramount. As you mentioned, when this client sat down with me, it had already selected its mark, designed its logo and website, and had built its marketing around its SAVVY service mark. Knowing this, my approach with them differed from how I’d approach a client who is only considering whether or not to adopt a mark. This client was fully committed to its mark and opted not to explore the potential conflicts a clearance search would uncover. I explained the risks of refusal during USPTO examination, and the range of legal costs to battle a likelihood of confusion refusal. I also prepared them for the prospective need to narrow their applications’ services in order to squeeze into a register crowded with SAVVY marks. And finally, I alerted them that registering their rights in such a crowded space could also prompt owners of other SAVVY marks to object to my client’s registering and/or using its mark. This client is highly networked in their field, so they felt they could manage objections from colleagues and competitors. They needed me, though, to handle objections from the USPTO.

One of the first things you did in the office action response is to amend the language in the ID of services. Can you describe what you did to carve out your client’s specific services? How can you successfully amend goods/services so that you leave room for your client to conduct business, but also narrowly-tailor their offerings so that a mark can proceed to registration?

When responding to the Examining Attorney, I absolutely drew their attention first to the amended service descriptions. But limiting the client’s claims is not typically my first go-to! If narrowing the client’s claims is strategically necessary and possible for the client, then I discuss that option with them. In response to the first Office Action, my client agreed with me that it was necessary to maneuver around the SAVI SISTERS registrations with more than arguments because my client sought to register its sound-alike mark SAVVY for identical online networking services. Those services are central to my client’s business, but they were willing to carve out the SAVI SISTERS’s areas of activity, breast health and breast cancer, from its applications. My client agreed in the first instance to exclude those subject matter fields from its description, hoping that concession in combination with arguments would win the day. This was a much more palatable option for the client than deleting that core service entirely from its application. This client also understood that their use of SAVVY could be broader than the uses they might ultimately register.

After amending the ID of services, you pointed out that the registered marks were weak. Do you need to tread lightly if you are arguing that the cited registrations are weak, potentially opening the door for your client’s mark to be attacked as weak in the future?

Importantly, when crafting those arguments, you’re attacking the registered mark, not your client’s mark. You’re analyzing and gathering evidence that the registered mark as used in connection with the goods or services identified in the registration is conceptually weak and/or commercially weak. The more specific your analysis is to the registered mark, the more you will exclude your client’s mark from the attack. That said, it does sound risky to argue a mark is weak when it presumably has some similarity to your client’s mark. Here, however, avoiding this line of argument would not avoid the reality that my client selected a mark that’s widely used to market comparable services in their field. And you can and should counsel a client about ways they can build their mark’s strength.

Why is it so difficult to argue weakness?

You have to prove it! And your arguments should specifically consider the proof you gather. So it can be time consuming. Numerous third-party registrations of the same or similar mark for the same or similar goods/services can demonstrate the registered mark is conceptually weak. A multitude of third-party uses of the registered mark for the same or similar goods/services supports arguments that the mark is commercially weak. If you ran a clearance search, however, you might already have evidence on hand from the USPTO register and/or uses in commerce.

Next, you went on to address the examiner’s arguments that there was likelihood of confusion with the cited marks due to three of the DuPont factors: similarity of the marks, similarity of the services, and similarity of trade channels. How did you overcome each argument?

I made arguments pointing out all material differences, knowing the evidence was compelling that the registered mark is weak. Since weakness narrows a mark’s scope of protection and its capacity to exclude use of other marks, establishing weakness heightens the importance of distinctions between the marks. Even minute differences can be enough to foreclose a likelihood of confusion between marks. Likewise, differences between the goods or services, how they’re marketed, and in which trade channels they’re typically offered can be probative that confusion is not likely. For instance, I argued that SAVVI’s advertising services were sufficiently different from my client’s recruitment services, although as you’ll see the Examining Attorney did not agree.

After filing your response, the examiner was satisfied with your response with regard to the SAVI SISTERS marks, but upheld the refusal with regard to the SAVVI mark. Additionally, the examiner cited additional, newly-registered marks citing §2(d) likelihood of confusion – MEDSAVVY and SENSAVVY. What was your next step in overcoming the refusal?

While we did not knock-out the SAVVI mark in the first round, the Examining Attorney accepted our arguments enough to narrow that refusal to just the one specification mentioning advertising. For the response, the client consented to amend its recruiting services by not casting them as “recruitment advertising services,” which ultimately did not materially limit the claim. Since the examiner cited new registrations, this was a new Office Action, so we could rely on another modest amendment. If this had been a final refusal, the client might have been forced to make a more substantial change to ensure the application would survive examination.

Since the Examining Attorney limited the new refusals to certain broad specifications in my client’s application, the client agreed to carve out space for MEDSAVVY’s and SENSAVVY’s use in connection with pharmaceuticals. To ensure those amendments would be sufficient, I also demonstrated that both registrations were conceptually weak, arguing that the differences between the marks and their services, as amended, would preclude consumer confusion.

Once you submitted your second response, you were able to get the application through to publication. What are some lessons you learned in prosecuting this application? How important was it to listen thoughtfully to the Examining Attorney about the crux of the conflict?

This is a great question. It’s easy to listen carefully to the Examining Attorney, especially by comparing their Office Action arguments with other similar Office Actions. And you can learn a lot about which issues are most material for them, when they maintain a refusal in a subsequent Office Action. Here, from go, the Examining Attorney only partially refused my client’s mark, identifying the services that, in their estimation, would lead to confusion if marketed under both my client’s mark and the registered marks. And, as you mentioned, they withdrew the refusal as to the SAVI SISTERS registrations after my client amended its services. This signaled the Examining Attorney could be particularly responsive to amendments to my client’s service descriptions.

I do wonder whether the refusals could have been overcome by just amending my client’s service descriptions! But even when looking back at the responses today, I think it was vital that I also gathered evidence and argued that the registered marks were weak.

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