Avoid A Likelihood of Confusion With Someone Else: Be First To File on the Principal Register

Principal Registration has more rights, trying to stop someone from using your unregistered (common law) or pending mark or Supplemental Register mark is difficult. Be The First to File!
























What is a Refusal Under 2d?

15 U.S.C. § 1052. Trademarks registrable on principal register

No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it —


(d) Consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive: Provided, That if the Director determines that confusion, mistake, or deception is not likely to result from the continued use by more than one person of the same or similar marks under conditions and limitations as to the mode or place of use of the marks or the goods on or in connection with which such marks are used, concurrent registrations may be issued to such persons when they have become entitled to use such marks as a result of their concurrent lawful use in commerce prior to (1) the earliest of the filing dates of the applications pending or of any registration issued under this chapter; (2) July 5, 1947, in the case of registrations previously issued under the Act of March 3, 1881, or February 20, 1905, and continuing in full force and effect on that date; or (3) July 5, 1947, in the case of applications filed under the Act of February 20, 1905, and registered after July 5, 1947. Use prior to the filing date of any pending application or a registration shall not be required when the owner of such application or registration consents to the grant of a concurrent registration to the applicant. Concurrent registrations may also be issued by the Director when a court of competent jurisdiction has finally determined that more than one person is entitled to use the same or similar marks in commerce. In issuing concurrent registrations, the Director shall prescribe conditions and limitations as to the mode or place of use of the mark or the goods on or in connection with which such mark is registered to the respective persons.


Why is Avoiding or Overcoming A Likelihood of Confusion (refusal under Trademark Act Section 2(d)) Important?


Likelihood of confusion is a bar to registration. As long as another prior registered or prior pending application is in the way, a new application will not register. Being refused is bad but being sued is probably worse.



How Can I Overcome A Likelihood of Confusion Refusal? Or Opposition?

3 DIY Strategies or Call us at 651-500-7590 for help


1. Is the Prior Mark a Descriptive Trademark? It may have a narrow scope of protection.

Descriptive Trademark = Narrow Scope of Protection Scenarios

  • A narrow scope of protection translates into Competitor B (later comer) being able to use a trademark very close to Competitor A and getting away with it even if Competitor A was first. Competitor A has to spend more and more to defend their market (advertising) and name (legal fees). If Competitor A had a stronger mark to begin with, the advertising could be offensive instead of defensive and the defensive legal fees could be avoided and invested in being more innovative or some other long term goal. If you are Competitor B, you may be able to argue that the rights of A are not broad enough to prevent B from registering.
  • A narrow scope of protection may mean that USPTO trademark examiners do not refuse new applications from Competitor B and Competitor C that have some similarity to Competitor A. Competitor A has to oppose, cancel or sue in order to defend their rights. (This can be good for the Competitor A attorney’s cash flow to always have some kind of legal proceeding in the works.) Sacrificing investing in growth in order to pay legal fees has long term consequences.  If you are Competitor B, you may be able to argue that the rights of A are not broad enough to prevent B from registering.



2. Is Your Mark the Prior Mark in Terms of Use in Commerce?

You may be able to get a consent agreement with the conflicting mark cited by the trademark examiner or oppose or cancel the prior registered or prior pending trademark application.


3. Use a Strategic Goods/Services Identification to Avoid or Overcome a Likelihood of Confusion Refusal or Opposition

A strategic, narrow, and precise goods and services description on an initial application, made as a result of a thorough trademark search may result in no likelihood of confusion as to source, and similar marks can co-exist. Amending in a Response to Office Action (ROA) to a strategic, narrow, and precise goods and services description on a refused application may overcome a likelihood of confusion as to source, and similar marks can co-exist.




How can you Avoid Likelihood of Confusion?

Verify Right to Use Before Using and Before Applying

A federal, state, and common law trademark search and clearance (conflict analysis) can verify the right to use the proposed mark by verifying no prior owner has acquired the right by use or registration in federal, state, or common law markets (registered and unregistered).  No search can uncover every used mark but doing a thorough search can substantially decrease the risk of having an opposed trademark or an infringing trademark.


First to File Isn’t Just a Patent Issue

The first to file a trademark application has an advantage as well. It has been implicitly recognized that there is a policy of encouraging prompt registration of marks by rewarding those who first seek registration under the Lanham Act. Weiner King, Inc. v. Wiener King Corp., 615 F.2d 512 (CCPA 1980). Even a weak mark [that was filed first or has the benefit of priority] is entitled to protection against the registration of a very similar mark for closely related goods. See King Candy Co. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 109 (CCPA 1974) (likelihood of confusion is to be avoided as much between weak marks as between strong marks).



Trademark Rights

Principal Register

Supplemental

Register

Common Law

Bring infringement suit in federal court based on the federal registration

YES

YES

NO

Can be used by trademark examiner against future applications of confusing similar marks

YES

YES

NO

Mark is easy to find for search reports

YES

YES

NO

Owner can use ® to symbolize federal registration

YES

YES

NO

Incontestability of mark after 5 years

YES

NO

NO

Statutory presumption of validity

YES

NO

NO

Statutory presumption of ownership

YES

NO

NO

Statutory presumption of distinctiveness or inherently distinctive

YES

NO

NO

Statutory presumption of exclusive right to use the mark in commerce

YES

NO

NO

Can be recorded with US Customs and Border Protection (CBP) to prevent importation of infringing goods

YES

NO

NO

Ability to bring federal criminal charges against traffickers in counterfeits

YES

NO

NO

Use of the U.S. registration as a basis to obtain registration in foreign countries

YES

NO

NO

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Call 1-651-500-7590 or email WP@NJP.legal for Responses to Office Actions; File or Defend an Opposition or Cancellation; Trademark Searches and Applications; Send or Respond to Cease and Desist Letters.

For more information from Not Just Patents, see our other sites:      

Steps to a Patent    How to Patent An Invention

Should I Get A Trademark or Patent?

Trademark e Search    Strong Trademark     Enforcing Trade Names

Common Law Trademarks  Trademark Goodwill   Abandoned Trademarks

Patentability Evaluation

Chart of Patent vs. Trade Secret

Patent or Trademark Assignments

Trademark Disclaimers   Trademark Dilution     TSDR Status Descriptors

Oppose or Cancel? Examples of Disclaimers  Business Name Cease and Desist

Sample Patent, Trademark & Copyright Inventory Forms

Verify a Trademark  Be First To File    How to Trademark Search

Are You a Content Provider-How to Pick an ID  Specimens: webpages

How to Keep A Trade Secret

State & Federal Trade Secret Laws

Using Slogans (Taglines), Model Numbers as Trademarks

Which format? When Should I  Use Standard Characters?

Shop Rights  What is a Small or Micro Entity?

Patent Drawings

Opposition Pleadings    UDRP Elements    

Oppositions-The Underdog

How To Answer A Trademark Cease and Desist Letter

Converting Provisional to Nonprovisional Patent Application (or claiming benefit of)

Trademark Refusals    Does not Function as a Mark Refusals

How to Respond to Office Actions

What is a Compact Patent Prosecution?

Acceptable Specimen       Supplemental Register   $199 Statement of Use

How To Show Acquired Distinctiveness Under 2(f)

Patent search-New invention

Patent Search-Non-Obvious

Trademark Attorney for Overcoming Office Actions Functional Trademarks   How to Trademark     

What Does ‘Use in Commerce’ Mean?    

Grounds for Opposition & Cancellation     Cease and Desist Letter

Trademark Incontestability  TTAB Manual (TBMP)

Valid/Invalid Use of Trademarks     Trademark Searching

TTAB/TBMP Discovery Conferences & Stipulations

TBMP 113 Service of TTAB Documents  TBMP 309 Standing

Examples and General Rules for Likelihood of Confusion

USPTO Search Method for Likelihood of Confusion

Examples of Refusals for Likelihood of Confusion   DuPont Factors

What are Dead or Abandoned Trademarks?

 Can I Use An Abandoned Trademark?

Color as Trade Dress  3D Marks as Trade Dress  

Can I Abandon a Trademark During An Opposition?

Differences between TEAS and TEAS plus  

How do I Know If Someone Has Filed for An Extension of Time to Oppose?

Ornamental Refusal  Standard TTAB Protective Order

SCAM Letters Surname Refusal


What Does Published for Opposition Mean?

What to Discuss in the Discovery Conference

Descriptive Trademarks Trademark2e.com  

Likelihood of Confusion 2d

Acquired Distinctiveness  2(f) or 2(f) in part

Merely Descriptive Trademarks  

Merely Descriptive Refusals

ID of Goods and Services see also Headings (list) of International Trademark Classes

Register a Trademark-Step by Step  

Protect Business Goodwill Extension of Time to Oppose

Geographically Descriptive or Deceptive

Change of Address with the TTAB using ESTTA

Likelihood of confusion-Circuit Court tests

Pseudo Marks    How to Reply to Cease and Desist Letter

Not Just Patents Often Represents the Underdog

 Overcome Merely Descriptive Refusal   Overcome Likelihood Confusion

Protecting Trademark Rights (Common Law)

Steps in a Trademark Opposition Process   

Section 2(d) Refusals   FilingforTrademark.com

Zombie Trademark  

What is the Difference between Principal & Supplemental Register?

Typical Brand Name Refusals  What is a Family of Marks? What If Someone Files An Opposition Against My Trademark?

How to Respond Office Actions  

DIY Overcoming Descriptive Refusals

Trademark Steps Trademark Registration Answers TESS  

Trademark Searching Using TESS  Trademark Search Tips

Trademark Clearance Search   DIY Trademark Strategies

Published for Opposition     What is Discoverable in a TTAB Proceeding?

Counterclaims and Affirmative Defenses


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