TRADEMARKS:  BEATING THE DREADED §2D LIKELIHOOD OF CONFUSION REFUSAL

Remember, it’ll be a factual battle, not a legal one.

Caselaw won’t win the day, as the TTAB (the USPTO’s appellate arm) can always find another case to top yours in order to show how similar your mark is to the already-registered (pre-dating) mark (the one being used to reject).  It’s a game that was lost the moment the you chose a similar name (and a related international class) that was similar to one that was already taken in a related industry.

Remember:  The USPTO customarily chooses/favors the party with the previous registration, primarily to validate their own registration process.  Examiners generally don’t like to reverse their well-considered judgment calls. https://www.uspto.gov/trademarks/search/likelihood-confusion

Remember, unlike a 15/20 year patent expiration,  Trademarks, if properly maintained, live on forever.  The USPTO does not want to dilute this power or let a squatter preempt the field, so they demand true novelty & true active use from new ®️ Applicants.

*The key is to forward evidence of tons of online reviews saying  “Widget Brand makes the best widgets, and I trust their brand; there’s nothing like it on the market!”

Ask your reviewers to mention your brand in their 5 Star Reviews – it’ll be worth its weight in gold.

Dubious caveat:  (the ‘by the book’ method):  if you want to embroil yourself in the legal battle to distinguish your mark using the 13 DuPont Factors to try & beat the Examiner’s edict,

Here are the 13 DuPont factors you’ll need to show.

Note: this battle will benefit the lawyers, boost your pre-loss ego, will cost you a fortune,

and you’ll probably lose.

• The degree of similarity between the marks including visual appearance, sound, connotation, commercial impression, and meaning; applicant must show these elements are totally different (within all related industries to applicant’s industry) to show novelty for ®️.

• Relatedness of the goods or services (as described in the trademark application);

Unfortunately, even “related by International Class” is sufficient to reject. Exhibits can beat this if products/services are shown to be TOTALLY UNRELATED.

• Similarities in established trade channels; must show totally different.

• The sophistication of the consumers;

Applicant must clearly distinguish to show “no American consumer would possibly be confused,” and the evidence to show this is through “CONSUMER REVIEWS.”

• The fame of the trademark (amount of sales, amount spent on advertising, length of use of the mark, etc.);

APPLICANT EVIDENCE NEEDED HERE, not just testimony here.

• The number and nature of similar marks in use in commerce on similar goods or in connection with similar services;

Crossover, similar to above.

• Evidence of actual confusion;

TMEP section 1207.  This rarely shown by the Examiner simply because they don’t need it to reject.  The Examiner can speculate there might be “likelihood of confusion” on the slightest whim based on above factors, and the rejection of the Applicant’s TM attempt will stand on appeal at the TTAB.

• Evidence of concurrent use without evidence of actual confusion; same method as #5 above.

• Whether the trademark is used on a variety of goods or only used on a single product (family of marks or house mark);

NEED APPLICANT EVIDENCE HERE, but rarely a dispositive factor.

• The market interface between the applicant and the owner of the prior mark;

Crossover mixed between above factors.

• The extent to which applicant has a right to exclude others from use of its mark;

Statutory; involves “acquired distinctiveness” based on another form of ®️ lasting 5 years or more, which new Applicants rarely have.

• The extent of potential confusion, minor or substantial; and

This “potential confusion” is unfortunately presumed; See:  On-Line Careline (Fed. Cir) re: section 1207

• Any other established fact probative of the trademark’s use in commerce. Both Active.

Good luck!  If you need help with it, feel free to give me a call!

-Rich Salles, patent lawyer, Walnut Creek, CA.  (925) 478-5662