TL;DR: Receiving a USPTO Office Action refusing your trademark for a Likelihood of Confusion (Section 2(d)) or Mere Descriptiveness (Section 2(e)(1)) is a major hurdle, but it isn’t necessarily a dead end. Below, we break down the exact legal structure and sample arguments we use to overcome these common refusals.
When you file a trademark application, the United States Patent and Trademark Office (USPTO) examining attorney will search their database to ensure your mark is both legally protectable and unique. If they find an issue, they will issue an Office Action.
The two most difficult substantive refusals to overcome are Likelihood of Confusion (your mark is too similar to an existing one) and Mere Descriptiveness (your mark simply describes your product). A successful response requires well-researched legal arguments citing the Trademark Trial and Appeal Board (TTAB).
Here are sample structures and arguments showing how we approach these complex responses.
Sample 1: Overcoming a Likelihood of Confusion Refusal (Section 2(d))
A Section 2(d) refusal means the USPTO believes consumers will be confused between your brand and a previously registered trademark. To overcome this, you must argue the DuPont factors, primarily focusing on the differences between the marks and the differences between the goods/services.
The Strategy: Even if two marks share a similar word, you can often win by proving that the overall commercial impression is different or that the products operate in completely unrelated industries.
Sample Argument (Excerpt):
“The Examining Attorney has refused registration of the Applicant’s mark under Trademark Act Section 2(d), 15 U.S.C. §1052(d), asserting a likelihood of confusion with the cited registration. The Applicant respectfully disagrees. >
First, the marks are distinct in sound, appearance, and commercial impression. While both marks share the term [Insert Word], the Applicant’s mark pairs it with a unique, dominant design element and an additional phrasing that entirely changes the visual and phonetic impact. As established in In re E. I. du Pont de Nemours & Co., the marks must be viewed in their entireties. When viewed as a whole, the commercial impression of the Applicant’s mark is [Describe Impression], whereas the cited mark conveys [Describe Different Impression].
Second, the goods and services are wholly unrelated. The cited registration protects [Insert Registrant’s Goods], which move through distinct trade channels to specialized buyers. The Applicant’s goods are [Insert Applicant’s Goods], which are sold direct-to-consumer in entirely different retail environments. Because the marks differ significantly and the goods do not overlap in the marketplace, no likelihood of confusion exists.”
Sample 2: Overcoming a Mere Descriptiveness Refusal (Section 2(e)(1))
A Section 2(e)(1) refusal means the USPTO believes your name just describes a feature, ingredient, or characteristic of your product, meaning other businesses need to be able to use that word too.
The Strategy: To overcome this, you generally need to argue that your mark is “suggestive”—meaning it requires the consumer to use a bit of imagination or thought to connect the brand name to the product.
Sample Argument (Excerpt):
“The Examining Attorney has refused registration under Section 2(e)(1), asserting that the Applicant’s mark is merely descriptive of the services. The Applicant respectfully requests reconsideration, as the mark is suggestive, not descriptive.
A mark is suggestive if imagination, thought, or perception is required to reach a conclusion as to the nature of the goods or services. Here, the term [Insert Mark] does not immediately convey the specific nature of the Applicant’s [Insert Industry] services. Instead, it requires a mental leap. The combination of these specific words creates an incongruity that forces the consumer to pause and interpret the meaning.
Furthermore, there is no evidence that competitors use this specific phrasing to describe similar services. Therefore, the mark does not deprive competitors of the apt terminology needed to describe their own offerings. For these reasons, the mark is inherently distinctive and should proceed to publication.”
Summary: Key Elements of a Successful Response
When drafting your own response to a substantive refusal, ensure your document contains these three critical elements:
| Essential Element | Purpose in Your Response |
| Legal Precedent | Citing specific TTAB cases (like DuPont) shows the examiner you are applying established legal standards to your facts. |
| Evidentiary Exhibits | Attaching real-world evidence (e.g., website screenshots, dictionary definitions, third-party registrations) backs up your claims. |
| Direct Address of the Examiner’s Points | Specifically rebut the exact reasons the examining attorney listed in the Office Action, leaving no argument unaddressed. |
Specific Example: Here is a recent example of an office action filed with the USPTO that succeeded in overcoming both a likelihood of confusion refusal with a registration under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), as well as a descriptiveness refusal pursuant to Trademark Act Section 2(e)(1), 15 U.S.C. § 1052(e)(1).
I have omitted the exhibits and the response form, to focus on the substance and structure of the arguments. The full record for this mark, BOLIDO, USPTO Registration No. 5663308, can be found in TSDR here.
Sample USPTO Trademark Office Action Response for Likelihood of Confusion
Frequently Asked Questions (FAQs) About Substantive Office Actions
Can I just use these sample arguments for my own Office Action?
No two trademark applications are identical. While these samples show the structure and tone of a legal argument, your response must be highly customized to your specific brand, the cited trademark, and the unique facts of your industry. Simply copy-pasting standard arguments without supporting evidence will almost certainly result in a Final Refusal.
How long does it take for the USPTO to review my response?
Once you submit your Office Action response, it typically takes the examining attorney anywhere from 2 to 4 weeks to review your arguments, though it can sometimes take a few months depending on their current backlog.
What happens if I submit this response and the examiner still says no?
If your arguments do not convince the examiner, they will issue a “Final Office Action.” At that stage, your options are to file a Request for Reconsideration (if you have new, compelling evidence) or file a formal appeal to the Trademark Trial and Appeal Board (TTAB).
Is it too late to hire an attorney if I already received the Office Action?
Not at all. In fact, receiving a substantive refusal is the most common time business owners realize they need professional help. An experienced trademark attorney can take over your application, review the examiner’s claims, and draft a robust legal response on your behalf.
