Section 2d Refusal: What Does That Mean?
So you got a 2d refusal when you try to register your trademark. Now what what does that mean?
2d refusal is a likelihood of confusion. That means that the USPTO office is refusing registration of your trademark because it's too similar to someone else's trademark. That's where we get the term likelihood of confusion. Refusals from the USPTO mean that there is, in short, a refusal. They're refusing to move your trademark further down the line closer to registration. So what can you do? You can overcome refusals. And sometimes that is your best option. Sometimes it's not.
How do you do this? Refusal can be overcome by submitting legal arguments that form a response to an Office Action. This is where you absolutely need a lawyer. There's so much DIY in trademarks these days. 90% of the time you're going to reach some type of roadblock and that's where you need an expert who can help you move beyond that. Why am I saying that? Refusals, especially a 2d likelihood of refusal, requires legal arguments submitted almost like a motion in a courtroom. It's very similar to going before a judge, the arguments have to be supported by legal facts, legal arguments, evidence, and more. It's really important that you have someone do this for you and an attorney who knows this field. Now, the likelihood of winning one of these is heavily fact dependent. If you submit arguments to overcome that refusal, and it is approved, your treatment is going to move further down the line closer to registration. Which is what we all ultimately want. However, there is a high number of trademarks that do not make it to registration once they're issued a 2d refusal.
Now, here are a few things to look out for if you are issued a 2d refusal to know if your case has a chance of winning.
Look at other marks cited against yours. The first thing is look at the other marks that are cited against yours. If they sell the same type of goods or the same type of commerce, it can be very hard to overcome that, especially if the names are similar.
Look at the spelling and the sound of the other marks that are cited against yours. If they sound similar to yours, they're spelled similarly, or if they look the same (like by logo or a quick glance), that's going to be a tough one to overcome. There might not be a lot of success.
Look at the goods cited if they're different than yours. For instance, say that you sell cosmetics, but the goods cited in the other trademark could be something like face washes or body preparation type cream. So the other goods cited is not exactly cosmetics but more in the facial care line. Those are going to be close enough that the trademark is going to say you're selling makeup and this person is selling a face wash. But they could be sold as the same type of commerce in the same types of stores. Think of it this way, if you're in a department in Target and you know that you can get shampoo, deodorant, toothpaste, all these things in that same department, you're probably going to run the risk of likelihood of confusion if something has a similar name. And if it's in that same department, even though it's different goods, we run that risk.
Now, what can you do? You’ve read all of these issues and you’re thinking “I have all these problems. I don't know what to do.” There might be another option called a consent agreement. Again, heavily fact dependent and this probably needs to be done with an attorney. I don't think I've ever heard anyone doing this on their own. You're probably going to get a letter that says you need a lawyer. Now a consent agreement is going to give you limited use of that mark, if one of the marks that were cited against yours allows you to use it in a limited capacity. Again, heavily fact dependent. What you want to look at is if the service you are providing is different enough that it won't be confused with this other product in commerce. So we want to think like that Target example I gave you before. If we’re in that department and our products are different but they have similar names, could I reach out to the other person in that department and see if they could give me limited consent.
An example. Let's say that you're selling a facewash and what’s cited against you is a toothpaste. The toothpaste company always uses that brand for only toothpaste and they've never even dabbled in the face wash department. They have no desire to. You might be able to get a consent agreement by reaching out to the toothpaste company and seeing if they're willing to work something out.
I'm keeping this very high level, but in short, your key takeaways are this. 2d refusal does not mean it's over. It is heavily fact dependent. You need to read through the refusal and understand what's being cited against you. If the marks cited are similar to yours, then you don't have a great chance. Now, if we can make a few other arguments or reach out for consent, then that's an option. Now, if the things being cited against you are totally different and there's some solid arguments you can make, then you need an attorney to submit those arguments. Just like a courtroom, no one can promise you an outcome. All we can do is the best we can do. There are no guarantees in anything trademark law related. If you need help, reach out to me!
