Trademark Free Zone (2024)

FAQs

How to respond to likelihood of confusion rejection? ›

Likelihood of confusion

The USPTO can reject an application if the mark is likely to be confused with another previously registered mark. For example, if there is an existing trademark for Nutto and you are trying to register a mark for Knutto, it is too similar.

This is known as a likelihood of confusion, and it's the most common reason for refusing registration. The best way to avoid a likelihood of confusion refusal is to conduct a comprehensive clearance search and understand how to correctly assess your results before submitting your application.

In a likelihood of confusion case, the Opposer must also establish that it has priority. This means that it has superior trademark rights to that of the Applicant. This can be proven by either asserting a prior trademark registration, prior common law use, or use analogous to trademark use.

Applicants who wish to appeal a denied trademark application may do so by filing an official appeal with the Trademark Trial and Appeal Board (TTAB). The TTAB is a division of the USPTO that handles a variety of trademark-related legal issues.

To support a trademark infringement claim in court, a plaintiff must prove that it owns a valid mark, that it has priority (its rights in the mark(s) are "senior" to the defendant's), and that the defendant's mark is likely to cause confusion in the minds of consumers about the source or sponsorship of the goods or ...

In general, once the fee is paid for trademark registration, it is non-refundable. This means that if your trademark application is ultimately rejected, abandoned, withdrawn, or deemed ineligible for registration, you typically will not receive a refund for the fee already paid.

How often are trademarks denied? ›

According to the USPTO, less than 50% of trademark applications are approved without issuing an Office Action. That's more than 1 of every 2 applications is initially rejected, a substantial margin.

Descriptiveness / lack of distinctiveness: Terms that literally describe items as they are ("tomato," "beer," "copper" or any other common word) cannot be trademarked as they must be reserved for general use. Similarly, marks that fail to indicate a particular commercial enterprise to consumers will not be registered.

§ 1125(a), the plaintiff must demonstrate that (1) it has a valid and legally protectable mark; (2) it owns the mark; and (3) the defendant's use of the mark to identify goods or services causes a likelihood of confusion.

The standard for trademark infringement in the United States is likelihood of confusion, which looks at whether two competing trademarks would be considered confusingly similar, such that consumers (i.e., your potential clients and customers) would be confused and mistake one trademark for the other.

Average Cost of Trademark Infringement Lawsuit

If your business is the plaintiff, as opposed to the defendant, a trademark infringement lawsuit can cost between $10,000 and $750,000. If you're the defendant, you may be forced to pay additional costs in financial damages and, in some cases, attorneys' fees.

Reverse confusion occurs when a large junior user saturates the market with a trademark similar or identical to that of a smaller, senior user. In such a case, the junior user does not seek to profit from the good will associated with the senior user's mark.

Overcoming a 2(d) Refusal

– Submit arguments and evidence: The applicant can present substantive legal arguments distinguishing the marks and submit factual evidence supporting their position through a response to the Office Action.

A likelihood of confusion survey assesses whether a “reasonably prudent” consumer would be confused by the use of similar marks on competing products. If a substantial number of respondents believe that the two marks are related or affiliated in some way, then there is strong evidence of potential confusion.