What should one do (as an attorney or as an applicant) upon receipt of a likelihood of confusion refusal (Section 2(d) of the Trademark Act) from the USPTO?

Before even reviewing or considering the merits of the refusal and the possible options for responding or arguments related to the refusal, I suggest taking the following steps:

Docket the deadline for a response. Response is generally due in six months. Mark that date on calendar and/or docketing software.

  • Mark the deadline on a back up docketing system as well (I use Outlook). In case the primary systems fails or crashes.

Check the status of a any cited registration.

  • Is it up for renewal now or soon? That could affect timing and options.
  • Is it almost 5 years on the registration of trademark? Challenging on grounds of priority is not available once the registration is more than 5 years old.
  • Is it owned by Applicant or a related entity? Sometimes a claim of ownership is all that is needed.

Check the status of any pending applications noted as “prior pending” potential conflicts. 

  • Set up monitoring of the application(s) status if needed and if possible.
  • Note if any of the application(s) might or will be published in the Official Gazette soon; missing the publication date could affect options and timing of priority challenges via Notice of Opposition
  • Review the specimens submitted with the application(s), if any. If suspect, consider reporting them to the USPTO via its pilot program.

There are many nuances and variables to each and every likelihood of confusion refusal, and therefore many reasons that having an experience trademark attorney is indispensable.

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