Confusing Similarity Rejections – § 2(d) Refusals
In the United States, confusing similarity rejections (§ 2(d) refusals) can typically be overcome in several ways, including: 1) submission of arguments that there is no likelihood of confusion, typically differentiating the products or services and the channels of trade by which they are distributed; 2) seeking consent from the owner of the anticipating mark; and/or 3) investigations to determine if the anticipating mark is in use, and if not filing a cancellation action on the basis of nonuse and seeking suspension of the pending application until a final decision of the cancellation action is rendered. Outside the United States, there are usually similar options available, but in each instance, they must be reviewed and determined as to the best way to proceed.
In the United States Patent and Trademark Office it is necessary to address the thirteen factors established in In E.I. DuPont de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973). I summarize the factors as follows:
- similarity or dissimilarity of the marks as to appearance, sound, connotation and commercial impression;
- the similarity or dissimilarity and nature of goods or services;
- similarity or dissimilarity of established, likely to continue trade channels;
- conditions under which and buyers to whom sales are made (i.e. “impulse buying”);
- fame of prior mark;
- number and nature of similar marks in use on similar goods;
- nature and extent of any actual confusion;
- length of time during and conditions under which there has been concurrent use without confusion;
- variety of goods on which a mark is nor is not used;
- market interface between applicant and owner of prior mark;
- extent to which applicant has right to exclude others from use of its mark on its goods;
- extent of potential confusion; and
- any other established fact probative of the effect of use
Seeking a consent may be possible. Here we would draft an agreement and forward it to the other side asking if they will consent to registration of your mark. This decision should be made after due consideration of whether or not if you were in their shoes, would you grant a consent. Also, once you contact them, you are then vulnerable to the possibility of them saying ‘no’ and thereafter have opened the door to a possible infringement suit. If the mark is not yet in use, and the application is filed on the basis of intent to use, then they could not file an infringement suit, only an opposition in the Patent and Trademark Office should we convince the examiner to approve your application.
Action if conflicting mark is not in use:
Here it is very important that we carefully investigate to determine if there is use of the anticipating mark. Often there have been assignments of trademarks between companies that are unrecorded. Assuming that we can establish nonuse, there are two ways to cancel a registration: i) on the basis of statutory nonuse, which is presumed nonuse for more than three years from the date of registration. Here the burden shifts to the registrant to demonstrate that they had no intention of abandoning the mark; ii) if it is less than three years, then we would have the burden of establishing the mark is not in use. Usually it takes showing that the company is no longer in business.
The foregoing is a general discussion of confusingly similar objections and possible ways to overcome them. For specific details on your situation, we can discuss this further.