You filed a trademark application, waited months for the USPTO to respond, and received an office action refusing your mark under Section 2(d) of the Lanham Act for "likelihood of confusion." This post explains what that refusal means, how the legal standard works, and what your options are.
The Question the USPTO Is Asking
A likelihood of confusion refusal does not require that your mark be identical to an existing one, or that your products compete directly with those covered by the cited registration. The legal question is whether consumers who encounter your mark in the marketplace would be likely to assume your goods or services come from the same source as those sold under an already-registered mark.
Courts have framed it this way: the issue is not whether people will confuse the marks themselves, but whether the marks will cause people to think the goods come from the same place. That is a meaningful distinction, and it is why a Section 2(d) refusal can arrive citing a mark you have never encountered, covering a product you do not sell.
The DuPont Factors
When the USPTO evaluates likelihood of confusion, it applies a multi-factor test first articulated in In re E.I. du Pont de Nemours & Co. (1973). The resulting framework, known as the DuPont factors, governs every Section 2(d) analysis.
There are thirteen factors in total, but two carry the most weight in most cases:
- The similarity of the marks in appearance, sound, meaning, and overall commercial impression
- The relatedness of the goods or services
Other factors also apply depending on the facts: the channels through which goods are sold, the sophistication of the typical buyer, the number of similar marks already in use in the marketplace, and others. Not every factor is relevant to every case, and the weight assigned to each can shift based on the specific circumstances.
One key principle: the more similar the marks, the less similar the goods need to be to support a confusion finding. Two nearly identical marks covering goods from different but related categories can still create a problem.
What Makes This Refusal Different
Most trademark refusals are about the mark itself. Is it too descriptive? Generic? Primarily a surname? Those questions can often be analyzed by looking at the mark alone.
A Section 2(d) refusal is relational. It is not about what your mark is in the abstract. It is about how your mark interacts with the full landscape of existing registrations, including marks covering goods you may not have considered related to yours, and marks that resemble yours in ways that are not immediately obvious.
What Happens If the Refusal Goes Unanswered
A Section 2(d) refusal is not a final rejection. It is an office action, which means you have an opportunity to respond. The deadline is real: if the response window lapses, the application goes abandoned.
Responding typically involves arguing that the marks are sufficiently different, that the goods are not sufficiently related, or that other DuPont factors weigh against confusion. In some cases it involves negotiating a consent agreement with the owner of the cited registration. In others, the honest assessment is that the refusal is well-founded and a rebrand is the more practical path.
None of those determinations is straightforward. The consequences of getting it wrong, including potential infringement liability, can extend well beyond the registration question.
Before You File
A professional clearance search is the most reliable way to surface potential conflicts before they become refusals. A search that returns no identical matches is not the same as a search that returns no conflicts, and the legal analysis required to distinguish the two is not something a database search alone can provide.
For a plain-English overview of where your mark may be exposed across the most common refusal grounds, the Trademark Refusal Risk Assessment is a free starting point.
If you received a Section 2(d) refusal and want to understand your options, Five Dogs Law offers complimentary consultations. There is no obligation.
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