4 Things to Consider When Your Trademark Application Is Refused Based Upon a Likelihood of Confusion with Another Mark

You applied for your Trademark Registration months ago.   You then started to build your brand or business around this mark.   You thought everything was alright until one day, months after filing for the mark, you receive a letter from the U.S. Patent and Trademark Office (hereinafter “USPTO”) informing you that your Trademark Application has been refused based upon a likelihood of confusion with another mark.   Angry and confused you cannot understand why the refusal was issued.   Your mark is not identical to the one blocking the registration thereof.   How could this be?   Concern grows to panic as you begin to ponder the costs associated with moving away from this mark and selecting and entirely new one – one which you can protect and maintain rights in.

Before you do so, however, take heart – you may yet get your trademark registered.   To do so, however, you must understand how the system works and what can be done to get your original trademark registered.

First it is important to understand how the USPTO works in regard to registering trademarks.   The USPTO employs anywhere from 250 to 350 trademark examining attorneys to review the roughly 220,000 trademark applications that are submitted for registration every year.   One of the critical elements of their jobs is to evaluate whether an applied-for trademark would be likely to cause confusion with another trademark which is either registered or already awaiting registration.
If they determine your trademark application is similar to a prior filed but yet to be registered trademark (i.e., an advisory regarding a “prior pending mark”) or a registered mark (i.e., refusal based upon Section 2(d) of The Trademark Act) they will refuse to register your trademark.   What every applicant needs to understand at this critical point is that this is a preliminary refusal and it is still possible to argue your mark through to registration at this point.   In considering whether you can still get the mark registered here...