Your Trademark Application Was Rejected Due to Likelihood of Confusion. What Now?

Your Trademark Application Was Rejected Due to Likelihood of Confusion. What Now? by Pat Werschulz

As I’ve explained previouslymost trademark applications go through the Trademark Office system without being rejected, unlike most patent applications. 

If you’re working with a trademark attorney, everything should go smoothly, because you’ve chosen your mark by working through the research results, making sure there is no likelihood of confusion with other marks. So if you are not working with a trademark attorney and you receive a rejection on your application, it really requires professional help. 

Sometimes there are some technical issues that would cause a rejection that can be quickly taken care of in about five minutes — but the one that’s difficult and most substantive is likelihood of confusion. Likelihood of confusion means that another trademark owner has a trademark that sounds very close to the one that you’re applying for in your industry or in a closely related industry. That often requires significant work on the part of the applicant along with their attorney. 

There are 45 classes of goods and services in the trademark system, so if you’re in the same class and you sound the same, then there’s a likelihood of confusion, even if it’s spelled differently. The Trademark Office also looks at closely related businesses. For example, if you have a trademark for beer and somebody else has it for wine, which is actually in a different class, a likelihood of confusion will be issued because wine and beer are often sold in the same distribution channels (the same types of stores, bars, and restaurants). So if your trademark sounds like another trademark that’s in the same class of goods, or in a closely related class, you will be rejected for likelihood of confusion.                                         

How do you get around this? How do you get out of this? Well, there are a couple of arguments that could be made in what is essentially a legal brief in response to the rejection. Some of the service classes are very, very broad. If you can show that your clients are different enough than the clients in different markets that have been designated as a senior (original) mark for likelihood of confusion, you can get around it. 

For example, I had a client who received a rejection and her service was training pharmaceutical sales representatives. The mark sounded the same but was spelled differently and had been registered previously as a business that provides bookkeeping services for doctors. So they ended up being in the same class, and it was even noted that the clients of the service were in the health and allied professions. Because each of these services were targeted to specific types of clients, and the clients were sophisticated — pharmaceutical sales representatives and doctors – sophisticated enough to know that these would not be offered by the same company and that they would not likely come across the other offered service in their profession — my client was able to register her trademark.  

The other possibility is that while the registration is still on the books, the trademark owner has gone out of business or is no longer using the trademark. I have another client who did not realize that another restaurant was using the same trademark in another state. It turned out that they had shut down a year ago but the registration was not up for renewal for another two years. So we petitioned to the Trademark Trial and Appeal Board (TTAB) for what’s called a cancellation. We petitioned for a trial to cancel the mark and gave the original mark owners the opportunity to defend and say that it was in use. And since we had already done our homework and knew that it was no longer in use, and the trademark holder did not respond, we won at the TTAB. Trademark law means use it or lose it.  

The third way to achieve registration when you are hit with a likelihood of confusion is to actually talk to the original owner of the trademark and have a consent agreement that states you will both use the mark and that the original trademark owner doesn’t believe that your trademark will have a significant impact on their business — maybe because of geography or maybe because the services are different enough that it was not likely to have confusion. Oftentimes if you can get a consent agreement with the original trademark owner, the trademark office will accept that and allow your mark to register.

As you can tell, this is not something that you can do for yourself. You do need a trademark professional to help you through all these different options; to draft agreements, to draft a brief, and to represent you before the TTAB, which is a regular trial with papers and service of process and responses. However, often it does not require an appearance in person in Alexandria, Virginia at the Trademark Office.

If you have started out on your own with your trademark application and receive a rejection, it’s time to consult your trademark professional.

Patricia Werschulz

Patricia P. Werschulz
Werschulz Patent Law, LLC
23 North Avenue East
Cranford, NJ 07016
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