Trademark Office Actions Under §2(d) Likelihood of Confusion: What Business Owners Need to Know

Trademark Office Actions Under §2(d) Likelihood of Confusion: What Business Owners Need to Know

Trademark Office Actions Under §2(d) Likelihood of Confusion: What Business Owners Need to Know

When you file a trademark application with the United States Patent and Trademark Office (USPTO), you hope for smooth approval. But many applicants are surprised when the USPTO issues an Office Action refusing registration under Section 2(d) of the Lanham Act. This section deals with “likelihood of confusion”—the most common ground for refusal.

If you’ve received a 2(d) refusal, don’t panic. With the right legal strategy, many of these refusals can be successfully overcome. Below, we’ll break down what a §2(d) likelihood of confusion refusal means, why the USPTO issues it, and what options you have to respond.

What Is a §2(d) Likelihood of Confusion Refusal?

Section 2(d) of the Lanham Act allows the USPTO to refuse a trademark application if the applied-for mark is deemed “likely to cause confusion” with an already registered trademark or a pending application.

This doesn’t mean the marks are identical. Instead, the USPTO examiner looks at whether consumers might mistakenly believe that the goods or services offered under your mark come from—or are connected with—another company.

For example:

  • If you applied for “SunBrite Clothing” and there’s already a registered mark for “SunBright Apparel,” the USPTO might issue a refusal under §2(d). Even though the spellings differ, the marks look and sound similar and both relate to clothing.

How Does the USPTO Determine Likelihood of Confusion?

The USPTO relies on what are known as the DuPont factors, established in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973). While there are 13 factors in total, the two most significant are:

  1. Similarity of the Marks

    • The examiner compares the marks in appearance, sound, meaning, and overall commercial impression.

    • Small spelling or design changes often aren’t enough to avoid confusion if the marks are otherwise too similar.

  2. Similarity of the Goods or Services

    • The examiner looks at whether the goods or services are related in a way that consumers might expect them to come from the same source.

    • For example, beer and wine are often considered related, while bicycles and clothing generally are not.

Other factors may include the strength of the existing mark, trade channels, and actual marketplace conditions. But the USPTO typically focuses on the similarity of marks and the relatedness of goods/services.

Common Mistakes Applicants Make

Many business owners assume that if their mark is not identical, it will pass. Unfortunately, that’s not the case. Common mistakes include:

  • Underestimating phonetic similarity – “QuickKleen” may still conflict with “KwikClean.”

  • Overlooking related industries – A café applying for “Bean House” might conflict with a registered “Bean Hut” coffee brand.

  • Failing to search before filing – A comprehensive trademark clearance search before filing can prevent costly refusals later.

How to Respond to a §2(d) Office Action

If you’ve received a likelihood of confusion refusal, you have options. A strong response can make the difference between securing your trademark and losing your application. Here are common strategies attorneys use:

  1. Argue the Marks Are Distinguishable

    • Highlight differences in sight, sound, and meaning.

    • Example: “SunBrite” could be argued as different in commercial impression from “SunBright” if evidence supports it.

  2. Differentiate the Goods or Services

    • Show that the goods/services are unrelated or travel in different trade channels.

    • Example: “Eagle” for bicycles may not conflict with “Eagle” for insurance services.

  3. Limit or Amend the Application

    • Narrowing your goods/services description can reduce overlap with the cited mark.

  4. Consent Agreements

    • Sometimes, the owner of the cited mark may agree that confusion is unlikely. A coexistence or consent agreement can be powerful evidence to overcome a refusal.

  5. Appeal to the TTAB

    • If the refusal is made final, you can appeal to the Trademark Trial and Appeal Board (TTAB).

Why You Shouldn’t Respond Alone

While the USPTO allows applicants to respond without an attorney, doing so can be risky. Trademark law is complex, and the arguments must be framed carefully to persuade the examiner. An experienced trademark attorney can:

  • Analyze the examiner’s reasoning.

  • Develop strong legal arguments under the DuPont factors.

  • Negotiate consent agreements.

  • Handle appeals before the TTAB if necessary.

A well-prepared response can save your brand thousands of dollars and years of lost goodwill.

Protecting Your Brand from the Start

The best way to avoid a §2(d) refusal is to invest in a clearance search before filing. A comprehensive search reviews not just exact matches but also confusingly similar marks in related industries. This upfront step gives you confidence in your brand choice and prevents wasted time and money on a doomed application.

How SharkMark Can Help

At SharkMark, we’ve helped countless businesses overcome §2(d) refusals and secure federal trademark protection. Whether you’re an entrepreneur just starting out or an established company expanding your brand, we provide the guidance you need to:

  • Evaluate and clear your trademarks.

  • File strong applications.

  • Respond strategically to USPTO Office Actions.

  • Protect your brand nationwide.

Final Thoughts

A §2(d) likelihood of confusion refusal doesn’t have to mean the end of your trademark journey. With a smart, legally sound response, many applicants successfully overcome refusals and move forward with registration.

Your brand is your business’s most valuable asset. Don’t let an Office Action stop you from protecting it.