We discussed in a previous post what an Office Action is when it comes to your trademark application. Now, let’s take a little deeper look at the different types of office actions you may encounter and how they can be overcome. Likelihood of confusion is an Office Action that you can avoid by looking at the DuPont factors beforehand.
A more difficult, and sometimes impossible, Office Action to overcome is one dealing with likelihood of confusion, called a 2(d) refusal. This is where the Examiner feels your mark is confusingly similar to an existing mark. These rejections analyze the DuPont factors, a 13-factor test that the USPTO uses to determine likelihood of infringement.
The DuPont Factors
- The similarity or dissimilarity of the marks in their entirety as to appearance, sound, connotation, and commercial impression.
- The similarity or dissimilarity and nature of the goods or services as described in the application or registration.
- The similarity or dissimilarity of established, likely-to-continue trade channels.
- The conditions under which, and buyers to whom, sales are made, that is, impulse vs. careful, sophisticated purchasing.
- The fame of the prior mark.
- The number and nature of similar marks in use on similar goods.
- The nature and extent of any actual confusion.
- The length of time during, and the conditions under which, there has been concurrent use without evidence of actual confusion.
- The variety of goods on which a mark is or is not used.
- The market interface between the applicant and the owner of the prior mark.
- The extent to which registrant has a right to exclude others from use of its mark on its goods.
- The extent of potential confusion, that is, whether de minimus or substantial.
- Any other established fact probative of the effect of use.
In re E.I. du Pont DeNemours & Co., 177 U.S.P.Q. 563 (CCPA 1973).
These 13 factors must be analyzed when trying to overcome the rejection, and no single factor should be treated as dispositive, nor should the inquiry be such that simply the party with greatest number of factors wins. The ultimate determining factor is whether consumers are likely to be confused.
This is an intensive analysis that should not be taken lightly. Sometimes, a consent or coexistence agreement is important in trying to overcome the rejection. See our previous blog post on that topic.
If you receive a 2(d) likelihood of rejection Office Action, it is especially important you contact us soon after receiving the Office Action so we can take time to formulate a game plan and response. We will evaluate the Office Action for a flat $49 fee, we will have a better idea of exactly how to respond, and the work required to get your trademark approved.