Owning a business means wearing a lot of hats—CEO, marketing team, finance department—and sometimes, you even try to be your own DIY attorney.
So, you took the leap and submitted your trademark application.
But here’s the thing—filing a trademark isn’t a “set it and forget it” situation. It’s a process (one long year process!).
And sometimes, the USPTO throws a curveball your way in the form of an office action. More specifically, a 2(d) trademark refusal—aka Trademark Likelihood of Confusion.
Mmm… what now? Can you fix this yourself? Should you panic? Is your brand doomed? Not necessarily.
But this is one of those moments where having the right strategy/response makes all the difference to getting that registration certificate.
First, let’s break it down.
What Is a Section 2(d) Trademark Refusal? Likelihood of Confusion!
A Section 2(d) refusal means the USPTO thinks your trademark is too similar to an existing registered trademark that was filed before you. They’re worried that if both trademarks exist in the marketplace, consumers might get confused about who’s who.
The USPTO examiner looks at a few factors when deciding if two trademarks are too similar:
Visual similarity – Do the marks look alike? (e.g., SunGlow vs. SunGlo)
Sound similarity – Do they sound the same when spoken? (Lush vs. Lushé)
Meaning & commercial impression – Do they give off the same vibe? (Urban Outfitters vs. Urban Wear)
Goods/services overlap – Are you both selling related things? (Beauty Boost Skincare vs. Beauty Boost Spa Services)
If the USPTO thinks your trademark and the registered one are too confusingly similar, they’ll issue a 2(d) refusal, blocking your registration.
But don’t panic—this isn’t the end of the road.
How to Respond to a Section 2(d) Refusal (Summary)
If you receive a 2(d) trademark refusal, you have three (3) months to respond. Here’s how you can approach it:
Research the Conflicting Trademark – Look up the current registered trademark in the USPTO database to analyze any of their upcoming deadlines (this the first thing we do, because if that conflicting mark is about to miss a deadline, it will “die” and dead trademarks can’t be cited against your mark)!
Analyze Key Differences – Check if your trademark is truly confusingly similar. Differences in meaning, industry, or branding could be used to argue against the refusal.
Choose a Response Strategy
Argue Against Likelihood of Confusion – Provide evidence that your trademark is not likely to be confused with the cited mark. If both your mark and the cited mark share a commonly used word, you can use a widely used argument to argue that consumers are used to seeing the word, and will focus on other aspects of the mark that make it unique from the cited mark.
Modify Your Class Identification – You can also narrow your goods/services (if it helps) to avoid overlap with the conflicting trademark’s goods/services.
Negotiate a Co-Existence Agreement – As a last resort, you can get the other trademark owner to agree that both brands can exist without confusion.
You’ve Got This… But We’ve Got Your Back!
We Handle Trademark Refusals So You Don’t Have To
At Imani Law, we know how frustrating a trademark refusal can be—but you don’t have to navigate it alone.
Many clients come to us after running into roadblocks with their application, and we step in to handle the process, respond on their behalf, and fight for approval.
Every case is unique, which is why we start with a consultation to understand the details and determine the best strategy for moving forward. If you’re ready to get your trademark back on track, let’s have a strategy call.
You can schedule a call with us with the button below, (or click here!) , and let’s make sure your trademark application gets that registration certificate you paid for!
But wait, don’t just take our word for it—here’s what our clients have to say:
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