So you have filed your trademark, waited for an Examiner at the USPTO to review your trademark, and you have received an Office Action from the USPTO stating that there is a “likelihood of confusion” of your trademark an existing trademark. How do you respond to the trademark office action?
The first step is to see if there is an actual likelihood of confusion between the Examiners cited mark, and your mark in your trademark application. To show confusion the examiner must provide evidence/arguments/logic as to 1) a similarity between the trademarks, and 2) a relationship between the goods and services.
After reviewing the cited mark by the Examiner and your mark, the following can be used to determine if there is an actual likelihood of confusion and how you can respond.
- Do the trademarks have the same commercial impression? The commercial appearance can be based on similar appearance, sound, meaning, etc. of the mark. For example, if your mark is slightly different but includes different structure/syntax then there may be the same commercial impression. For example, if a mark for computers was TECH-N’-HELP and a competitor wanted use the mar TECH-N-ASSIST, although the marks are different and have a different word, because of the structure of the marks are similar, and the words “ASSIST” and “HELP” are synonyms a court could find that the marks had similar commercial impression.
- Are the goods and services description in the marks related? If a company is using a trademark in an unrelated field there may not be a strong likelihood of confusion. This is because the companies may be targeting different audiences. This is related on a sub-class basis not on a classification basis itself. The classification system was more so made up for a way to neatly organize the subclasses.
- Are the marks related, established, likely-to continue channels of trade? This question leads to if the goods themselves are going to be seen in the same channels of trades. Is one of the marks associated with a high end product, where the other mark is directed towards a low end product, where there is a 100X price difference between the two.
- Is a portion of the existing mark disclaimed? Sometimes when filing a mark, an applicant will disclaim portions of the mark, stating that those portions are generic. This can be done to overcome a commercial impression type rejection.
- Is a portion of the mark diluted? If your mark includes the word “Tech,” it is likely that there are a lot of marks with the word “Tech” in them and this term may be diluted. Thus, you can argue that a term in the existing marks for similar products include this phrase. Thus, this portion of the mark isn’t likely to have a strong commercial impression to people purchasing the product, and thus not confuse a consumer.
As a trademark attorney when drafting responses to Office Actions, I review the marks and provide case law support for your position/arguments if possible. This is because showing how prior courts have handled similar issues can be paramount to overcoming the rejections (instead of just relying on my thoughts on the matter).