If your trademark application receives a substantive refusal, there is a high probability it is 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 work through.
The Most Common Reason for Refusal
Section 2(d) of the Lanham Act prohibits registration of a trademark that is "likely to cause confusion, or to cause mistake, or to deceive" when compared to one that is already registered or pending.
The standard is not actual confusion. The USPTO does not need to prove that anyone has been confused. The question is whether confusion is probable among ordinary consumers encountering the trademarks in the marketplace.
Citation: 15 U.S.C. § 1052(d)
A quick way to see whether a 2(d) citation is likely before you file is a Free Trademark Check; it runs the same register search the examining attorney will.
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 trademarks in their entirety as they would be encountered in normal commercial conditions.
Key principles:
- Similarity of sight, sound, and meaning: trademarks are compared on all three dimensions
- Commercial impression: the overall impression created by the trademark as a whole
- Imperfect recollection: consumers may not see both trademarks side by side; they rely on imperfect memory
- Relatedness of goods and services: even dissimilar trademarks 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.
| # | Factor | Weight |
|---|---|---|
| 1 | Similarity of the trademarks (appearance, sound, meaning, commercial impression) | Primary |
| 2 | Similarity or relatedness of the goods or services | Primary |
| 3 | Similarity of trade channels | Primary |
| 4 | Conditions under which sales are made (impulse vs. careful purchase) | Secondary |
| 5 | Fame of the prior trademark | Secondary |
| 6 | Number and nature of similar trademarks on similar goods | Secondary |
| 7 | Nature and extent of any actual confusion | Secondary |
| 8 | Length of time of concurrent use without actual confusion | Secondary |
| 9 | Variety of goods on which the trademark is used | Secondary |
| 10 | Market interface between applicant and owner of prior trademark | Secondary |
| 11 | Extent to which applicant has a right to exclude others | Secondary |
| 12 | Extent of potential confusion (de minimis or substantial) | Secondary |
| 13 | Any other established fact probative of the effect of use | Secondary |
The Three Most Important Factors
In practice, the USPTO gives the most weight to:
- Factor 1: Similarity of the trademarks. Are the trademarks similar in appearance, sound, meaning, or overall commercial impression?
- Factor 2: Relatedness of goods and services. Are the goods or services related, complementary, or in the same industry?
- Factor 3: Trade channels. Are the goods or 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 similarity of the trademarks and relatedness of the goods. You do not need to "win" on all 13 factors. If the trademarks are very similar and the goods are even remotely related, the USPTO will likely find confusion.
How the USPTO Applies the Test
Trademark Comparison
The examining attorney compares trademarks in their entireties, not element by element. Certain elements may still be given more weight:
- Dominant elements: the most distinctive, prominent part of the trademark carries more weight
- Shared root words: trademarks sharing a distinctive word are often found similar
- Prefixes and suffixes: consumers tend to focus on the beginnings of trademarks
- Descriptive or disclaimed elements: given less weight in comparison
Goods and Services Comparison
The goods do not need to be identical; they only need to be related. The USPTO looks at:
- Whether the goods or services are complementary
- Whether they are sold to the same consumers
- Whether they travel through the same trade channels
- Whether consumers would expect them to come from the same source
Your Deadline and What a Response Costs
Most USPTO Office Actions carry a three-month response deadline, counted from the issue date. You can buy a single three-month extension for a USPTO fee if you need more time to gather evidence or negotiate a consent agreement. Miss the deadline, and the application is abandoned; a petition to revive costs $250 and is only available where the delay was unintentional.
There is no USPTO fee for filing the response itself. The cost is the professional fee for analyzing the citation, building the evidence, and drafting the argument. Our office action response service handles 2(d) refusals at a fixed price; the current figure is on the pricing page. A consent agreement, where one is possible, adds negotiation time with the cited owner.
Response Strategies for Section 2(d) Refusals
1. Distinguish the Goods and 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 trademarks 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 Trademark
Submit evidence of third-party registrations using the same or similar terms. If many trademarks share the same word, it suggests the word is weak and consumers are accustomed to distinguishing between similar trademarks.
4. Submit a Consent Agreement
A consent agreement (or letter of consent) from the owner of the cited trademark is extremely powerful evidence. It tells the USPTO that the party most likely to be damaged by confusion does not believe confusion is likely.
5. Amend Your Goods and Services
Narrowing your description of goods or services to eliminate overlap with the cited trademark'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 those of the cited trademark (industrial vs. consumer, wholesale vs. retail, for example), this can weigh against confusion.
Evidence That Helps
When responding to a 2(d) refusal, consider submitting:
- Third-party registrations: other registered trademarks using similar terms for similar goods (shows the shared element is weak)
- Marketplace evidence: screenshots showing both trademarks 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 trademarks
- Sales evidence: years of concurrent use without actual confusion
Terms like "disclaimer," "consent agreement," and "commercial impression" are defined in our glossary.
Final Office Actions and TTAB Appeals
If the examining attorney maintains the 2(d) refusal after your first response, you will receive a Final Office Action. At this point, your options are:
- Request reconsideration: present new evidence or arguments
- Appeal to the TTAB: file an ex parte appeal (a per-class USPTO fee applies) to have the Trademark Trial and Appeal Board review the examiner's decision
- Request a suspension: if you are negotiating a consent agreement, ask the examiner to 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 it looks at the evidence fresh rather than deferring to the examiner's analysis.
For answers to the other questions owners ask at this stage, see our FAQ.
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