Registering Trademarks: Overcoming Section 2(d) Likelihood of Confusion Refusals

Under Section 2(d) of the Lanham Act, examining attorneys may refuse registration of a mark that so resembles an already registered mark that a consumer is likely to be confused as to the source of the products or services of the applicant. Determining the likelihood of confusion is made by applying the 13 factors outlined in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973). Some key factors are the similarity of the marks, the similarity of the goods or services, the similarity of established trade channels, the strength of the registered mark, the sophistication of purchasers, and the number and nature of similar marks in use on similar goods and services.

Before filing, trademark counsel should evaluate facts and make critical decisions to avoid refusal under Section 2(d). After an application is filed, if it is refused under Section 2(d), trademark counsel often have several options for overcoming such refusals. Frequently, trademark counsel mistakenly defaults only to arguing for coexistence, without considering the other options that might be available. For example, the registered mark may be abandoned or registered for an overbroad identification of goods or services. In that case, counsel may be able to petition for cancellation or partial cancellation of the mark and avoid arguing for coexistence altogether.

Listen as our authoritative panel examines the key du Pont factors, discusses strategies for avoiding refusal, and explores opportunities for responding to rejections under Section 2(d) of the Lanham Act.