How to Deal with 2(d) Refusals when filing a Trademark or Brandmark application with the USPTO

One of the first steps to consider as your company scales is protecting intellectual property assets. This can be done at the United States Patent and Trademark Office (USPTO), where an examining attorney will review the application and approve it or possibly issue an Office Actions; one of the most common issues is a 2(d) refusal if the applied for mark does not qualify as distinctive. Under Section 2(d) of the Lanham Act, examining attorneys may refuse registration of a mark that, when used in connection with goods or services, so resembles an already registered mark that it is likely a consumer would be confused as to the source of the goods or services of the applicant.. However, (2d) refusals can be contested through counsel with experience in raising the proper arguments.

Why the USPTO Files 2(d) Refusals

A 2(d) refusal is issued when a mark is not distinctive enough or suggests that it's associated with an already registered mark. For example, the mark "Shoe Locker" is too similar to "Foot Locker." The United States Patent and Trademark Office (USPTO) has a department of attorneys that reviews trademark applications in order to determine if a mark is too similar to other registered terms or phrases. If this is the case, you will receive a 2(d) refusal. A 2(d) refusal is considered an office action, and it can temporarily or permanently bar the registration of the trademark.

What Factors Determine a Trademark is Not Distinctive Enough

There are thirteen factors that determine if a trademark is not distinctive enough. They are known as "DuPont Factors"

1. The similarity of marks (appearance, sound, connotation, and commercial impression);

2. The similarity and nature of the goods or services associated with the marks;

3. The similarity of the established trade channels;

4. The conditions under which the goods or services are purchased (such as impulsive or careful, for example);

5. The fame of the prior mark;

6. The nature of marks that are considered similar;

7. The nature of the actual confusion;

8. How much time has passed without any confusion between similar marks;

9. The variety of goods on which a mark is or is not used;

10. Whether there is a connection between the application and the owner of the similar mark;

11. The extent to which the applicant has a right to exclude others from the use of its mark;

12. The extent of the potential confusion;

13. Other relevant factors which can aid the 2(d) refusal.

How to Respond to a 2(d) Refusal

The best way to respond to a 2(d) refusal is to identify the DuPont factors that are the most relevant and directly address them in a persuasive argument to the USPTO. It’s likely advisable to contact an attorney to help craft an argument that the marks are different.

Some of the key aspects to highlight include spelling, design, and connotation. These aspects can qualify as sufficient to showcase the main differences between marks. 

It is important to submit a defense of the mark that goes over all the DuPont factors. However, it's best to focus on the factors that are the most likely to cause confusion between the marks. Counsel may highlight that in most cases, the problem is not that two (or more) marks can be confused. Instead, it's the confusion as to the source or origin of the goods (or services) that the mark offers. Working with experienced and creative counsel that can use the DuPont factors to your advantage is wise.