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Likelihood of confusion refusal: when it can be overcome and what it costs

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A likelihood of confusion refusal can be overcome when the facts give the examining attorney a real reason to change course: the marks create different overall impressions, the goods or services aren't related the way the examiner assumed, the shared word is already crowded in your field, or the other owner consents. It can't be overcome by explaining how much the name means to you, and some of these refusals shouldn't be fought at all.

Cost depends on which path you take. I'll go through both.

What the examiner is actually deciding

The refusal comes from Section 2(d) of the Trademark Act. The examining attorney found a registered or earlier-filed mark and concluded that buyers seeing both would likely think they come from the same source.

The analysis follows a list of factors from a 1973 court case, In re E. I. du Pont de Nemours & Co. The USPTO's examination manual, at TMEP 1207.01, names the two that matter in nearly every case:

  • How similar the marks are in their entireties.
  • How related the goods or services are, as described in the application and the registration.

Other factors count when there's evidence for them: trade channels, how carefully buyers shop, how many similar marks are in use for similar goods, any actual confusion, how famous the earlier mark is, and whether the owners have a consent agreement. Not every factor applies, and the manual says any single factor can control a case.

When it can be overcome

The marks look, sound or mean something different as a whole. Two marks can share a word and still differ in overall impression. Wording, meaning and the dominant part of each mark all matter. A response here compares the marks as a buyer meets them, not word by word.

The goods aren't related the way the refusal says. The comparison is based on the goods as written in your application and the registration, not on what each business actually sells. That's a limitation and an opportunity. If your description was broader than your real products, narrowing it can move you away from the other owner. A description can be narrowed after filing, never broadened.

The shared word is already crowded. If many unrelated owners use and register the same word for similar goods, buyers learn to look at the other parts of each mark. Evidence of third-party registrations and use can show that the cited mark is weak and deserves narrow protection. This takes real evidence gathered for your field, not a few screenshots.

The other owner consents. A consent agreement between you and the owner of the cited mark is one of the listed factors, and it can outweigh the others. A good one explains why the parties believe confusion is unlikely and what they'll do to avoid it. Getting one means approaching the other owner, and they may say no or ask for something in return.

The cited registration is vulnerable. If the other owner stopped using the mark, there may be ways to challenge the registration itself. That's a separate proceeding with its own cost and timeline, and not every case has the facts for it.

When it's a hard fight

Be honest with yourself about these:

  • The marks are nearly identical and the goods overlap directly.
  • Your best argument is that you were using the name first but never registered it. Earlier use can matter in other proceedings, but the examining attorney is comparing your application against what's on the register.
  • Your argument is that your customers are different, but the description in your application doesn't say so.
  • Your argument is that nobody has been confused yet. Actual confusion isn't required for a refusal.

In those cases, the better money may go to a new name. I explain how examiners compare names in the article on how different a name has to be, and when different industries can share one in the article on the same name in a different industry.

The timeline

You have three months from the issue date to respond, with one three-month extension available for $125, filed before the deadline and before any response.

If the examining attorney isn't persuaded, the next letter is usually final. After a final refusal, you can file a request for reconsideration, an appeal to the Trademark Trial and Appeal Board, or both. Filing a request for reconsideration doesn't stop the appeal clock. If you want to keep the right to appeal, the notice of appeal has to be filed within the same response period. Many applicants file both together.

What it costs

USPTO fees:

  • Extension of time to respond: $125.
  • Appeal to the Trademark Trial and Appeal Board: $225 per class, with an appeal brief due 60 days after the appeal.

Legal fees at Citrus Legal:

  • A substantive Office Action response, including a likelihood of confusion refusal, starts at $1,600, flat, quoted in writing after I read the letter. That covers the argument and the evidence I gather for it. It applies to applications filed anywhere, including ones you filed yourself.
  • I don't handle appeals to the Trademark Trial and Appeal Board. If your case looks like it's heading there, I'll tell you early so you can plan for it.

Approaching another owner about consent, or challenging a cited registration, is quoted separately, because how much work it takes depends on who's on the other side.

The cheapest version of this refusal

The cheapest likelihood of confusion refusal is the one you never get. A clearance search before filing looks for the same marks an examiner will find, along with real-world use that never got registered. Every application I've filed for a client so far has been approved, with zero refusals, and that comes from the search.

If you're choosing a new name after a refusal, one mark from search to filing is $2,600 flat, or three payments of $950, plus the USPTO fee.

If you're holding a likelihood of confusion refusal now, the Office Action response page shows how I take over an existing application, and if a new name is the better route, the start page explains how that filing works.

Questions about your name? Email us at hello@citrus.legal, or book a paid 30-minute consultation (opens in a new tab) for advice on your specific situation.

Sources

This article is general information, not legal advice. Reading it does not create an attorney-client relationship.

When you are ready to own it

One mark. One flat fee. One attorney.

The search, the written opinion, the federal application and procedural Office Actions, for $2,600 or three payments of $950. Nothing is filed until you approve the search. If I call your mark low risk and the USPTO refuses it, I file again at no attorney fee.

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