You filed a trademark application for your home-based business and received the initial response from the Trademark Office (USPTO), denying the application. This response is called a “Non-Final Office Action.” The ground for denial often is likelihood of confusion with a preexisting trademark. The trademark examiner claims the preexisting trademark, owned by a third party is too similar to yours, both in terms of the mark itself and the intended goods. (The same applies for similarity of a mark identifying services, but we’ll refer to both as “goods” in this article.)
What to do? Is your application doomed? Should you have filed the application in the first place, if a search of databases would have spotted this third-party mark?
What to do next?
The answer is, almost half of the time, the denial can be overturned and your application can proceed to registration of your mark.
To be sure, if indeed your company’s application is confusingly similar to a preexisting mark, both in the mark and goods, your application will not fly. A trademark identifies the source of the goods – i.e., the manufacturer or provider (you). If another company were to have a nearly identical mark for nearly identical goods already, a consumer might well have difficulty discerning whether the mark refers to your company or the other company.
But often a likelihood of confusion rejection can be contested, advisedly through your trademark attorney. The attorney would file a Response to the Non-Final Action, arguing that the marks are actually not confusingly similar. Perhaps your mark includes words that distinguish your mark from the third party’s (e.g., BIG CREEK LUMBER vs. BIG CREEK METAL). Maybe your mark includes a logo that clearly suggests a different type of goods (e.g., BIG CREEK with a logo showing a stand of trees vs. BIG CREEK METAL). Possibly, the words are quite similar but the “dominant portion” is not (e.g., CAPITAL CITY BANK vs. CITIBANK – where a court found “Capital” to be the dominant portion of the first mark). All of these approaches and more can persuade the examiner to allow the application to proceed.
Even if the marks are nearly identical and of themselves difficult to distinguish, one could argue that the goods are so different as to avoid likely confusion. (e.g., CENTURION for lithium batteries vs. CENTURION for garden hand tools). Likelihood of confusion cannot exist if a consumer can readily discern that the sources are quite different.
Practical Considerations: Cost, Timing, and Alternatives
Ah, but what about cost? Maybe you filed the application on your own, without benefit of counsel. Responding to a likelihood of confusion rejection almost always needs to touch of seasoned counsel, who is aware of which arguments are typically persuasive (and which ones aren’t), someone who can find relevant cases and relevant trademark regulations to cite in support of the response. There is no one-size-fits-all price. It depends on the depth of the issues. However, safe to say, the fees will likely run one to a few thousand dollars. If the cost seems high, a responsible attorney may ask you whether you wish to contest the rejection or simply pick a different mark. Maybe you just started your business and use of the mark and could readily switch to something else. Maybe not.
The key is to act quickly. The Trademark Office requires any response to be filed within three months of their rejection. Your attorney may have a busy docket of other cases, and need a month or so of notice to work up the response.
Trademark office applications may be rejected on a variety of grounds in addition to likelihood of confusion. Whether the rejection is insurmountable or minor depends. Strategies for overcoming rejections can also vary. Bottom line: A Non-Final Office Action is often just the beginning, not the end, of your trademark journey.
Robert Payne is an author and founder of Payne IP Law, www.bobpayne.com, which has a national trademark prosecution and litigation practice.
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