Likelihood of Confusion: The #1 Reason Trademarks Get Refused

Likelihood of Confusion: The #1 Reason Trademarks Get Refused

If your trademark application receives a substantive refusal, there's a high probability it's a Section 2(d) refusal for likelihood of confusion. This is the single most common reason trademarks are refused registration — and one of the most complex areas of trademark law to navigate.

The Most Common Reason for Refusal

Section 2(d) of the Lanham Act prohibits registration of a mark that is "likely to cause confusion, or to cause mistake, or to deceive" when compared to a mark that is already registered or pending.

The standard is not actual confusion — the USPTO doesn't need to prove that anyone has actually been confused. The question is whether confusion is probable among ordinary consumers encountering the marks in the marketplace.

*Citation: 15 U.S.C. § 1052(d)*

What "Likelihood of Confusion" Means

The test looks at the situation from the perspective of an ordinary, reasonably prudent consumer — not a trademark expert. The analysis considers the marks in their entirety as they would be encountered in normal commercial conditions.

Key principles:

• Similarity of sight, sound, and meaning — marks are compared on all three dimensions
• Commercial impression — the overall impression created by the mark as a whole
• Imperfect recollection — consumers may not see both marks side by side; they rely on imperfect memory
• Relatedness of goods/services — even dissimilar marks can cause confusion if the goods are closely related

The 13 DuPont Factors

The USPTO applies a multi-factor test established in *In re E.I. du Pont de Nemours & Co.*, 476 F.2d 1357 (C.C.P.A. 1973). While all 13 factors are considered, not all are relevant in every case.

The Three Most Important Factors

In practice, the USPTO gives the most weight to:

1. Factor 1: Similarity of marks — Are the marks similar in appearance, sound, meaning, or overall commercial impression?
2. Factor 2: Relatedness of goods/services — Are the goods or services related, complementary, or in the same industry?
3. Factor 3: Trade channels — Are the goods/services sold through the same channels to the same consumers?

Pro Tip: A finding of likelihood of confusion can rest on as few as two DuPont factors — typically mark similarity and goods relatedness. You don't need to "win" on all 13 factors. If the marks are very similar and the goods are even remotely related, the USPTO will likely find confusion.

How the USPTO Applies the Test

Mark Comparison

The examining attorney compares marks in their entireties, not element by element. However, certain elements may be given more weight:

• Dominant elements — The most distinctive, prominent part of the mark carries more weight
• Shared root words — Marks sharing a distinctive word are often found similar
• Prefixes and suffixes — Consumers tend to focus on the beginnings of marks
• Descriptive or disclaimed elements — Given less weight in comparison

Goods/Services Comparison

The goods don't need to be identical — they only need to be related. The USPTO looks at:

• Whether the goods/services are complementary
• Whether they're sold to the same consumers
• Whether they travel through the same trade channels
• Whether consumers would expect them to come from the same source

Response Strategies for Section 2(d) Refusals

1. Distinguish the Goods/Services

Show that your goods or services operate in a fundamentally different market. Provide evidence that the goods are sold through different channels, to different consumers, at different price points.

2. Argue Different Commercial Impressions

Even if marks share a common word, argue that the overall commercial impression is different. For example, BLUE DIAMOND (almonds) and BLACK DIAMOND (cheese) both use gemstone names, but create distinct impressions.

3. Show Weakness of the Cited Mark

Submit evidence of third-party registrations using the same or similar terms. If many marks share the same word, it suggests the word is weak and consumers are accustomed to distinguishing between similar marks.

4. Submit a Consent Agreement

A consent agreement (or letter of consent) from the owner of the cited mark is extremely powerful evidence. It tells the USPTO that the party most likely to be damaged by confusion doesn't believe confusion is likely.

5. Amend Your Goods/Services

Narrowing your description of goods/services to eliminate overlap with the cited mark's goods can resolve the refusal. This may require deleting certain goods or adding specific limitations.

6. Argue Different Trade Channels

If you can demonstrate that your goods are sold exclusively through channels different from the cited mark (e.g., industrial vs. consumer, wholesale vs. retail), this can weigh against confusion.

Evidence That Helps

When responding to a 2(d) refusal, consider submitting:

• Third-party registrations — Other registered marks using similar terms for similar goods (shows the shared element is weak)
• Marketplace evidence — Screenshots showing both marks coexisting without confusion
• Dictionary definitions — If the shared term has a common meaning relevant to the industry
• Consumer declarations — Statements from consumers that they can distinguish the marks
• Sales evidence — Years of concurrent use without actual confusion

Final Office Actions and TTAB Appeals

If the examining attorney maintains the 2(d) refusal after your first response, you'll receive a Final Office Action. At this point, your options are:

1. Request reconsideration — Present new evidence or arguments
2. Appeal to the TTAB — File an ex parte appeal ($225 per class) to have the Trademark Trial and Appeal Board review the examiner's decision
3. Request a Suspension — If you're negotiating a consent agreement, request the examiner suspend action

TTAB appeals on 2(d) refusals have a meaningful success rate when well-argued with strong evidence. The Board conducts a de novo review — meaning they look at the evidence fresh, not deferring to the examiner's analysis.

*Received a Section 2(d) refusal? Our attorneys specialize in overcoming likelihood of confusion Office Actions. Get Refusal Help →*