by Traverse Legal, reviewed by Enrico Schaefer - January 17, 2012 - m. TTAB - Trademark Opposition, Cancellation & Appeal
Welcome to Trademark Law Radio, a top web resource on issues of trademark infringement, trademark licensing, trademark protection, and trademark registration.
This is Brian Hall a trademark attorney with Traverse Legal, PLC; a law firm that represents trademark applicants and those involved with trademark disputes throughout the United States. Today, I will be answering a question that involves an issue that I see fairly often. And that question is, “Is it always best to simply respond to an office action that includes a likelihood of confusion refusal?” And the short answer is no.
The particular scenario in which this often comes up is when a trademark applicant receives a United States Patent and Trademark Office office action refusing registration of their mark due to a likelihood of confusion with a pending application or registration. Oftentimes, those without the benefit of a trademark lawyer or trademark counsel may simply review that office action and try to file a response that overcomes it in hopes of getting their mark registered. However, the more advisable course of action is to look at the particular pending application or trademark registration that is standing in the way of your mark being registered, and in doing so, it is important to look at several pieces of information.
The first piece of information you need to look at is when was the mark of that particular application or registration first used? If your mark was first used before theirs, you may be in a position to challenge their trademark registration or trademark application. If you were the first to use the mark and there is, indeed, a likelihood of confusion between the two marks, you may be able to file a trademark opposition or a trademark cancellation with the TTAB. Alternatively, you may be able to file a trademark infringement lawsuit in federal court. However, a trademark attorney can look at these and advise you as to what the best option might be, which could include something as simple as starting with a cease and desist letter in hopes of ultimately agreeing with the other party as to the scope of your goods and services and possibly even entering into a consent agreement that allows both of your marks to be registered. So, again, it is important to first look at that first use in commerce date on the pending application or actual registration to see whether or not you are first.
The next thing you should look at is the actual goods or services. If, in fact, you do not believe there is a likelihood of confusion, then you might be best served by simply responding to the office action. However, in doing so, you should recognize that once you respond to the office action making the argument that there is no likelihood of confusion between the their mark and your mark, you’d be hard-pressed to later on pursue an action against that particular mark owner based upon a likelihood of confusion. And in some ways, you might even be precluded from making such an argument that is completely contrary to the one that you made in the past. So, it is extremely important to make an initial determination as to whether or not you do truly believe there is a likelihood of confusion or not. In the event that you do not think there is any chance of a likelihood of confusion, you can make that argument to the USPTO in response to the office action, but you should recognize that there is risk that you may not overcome the office action refusal and might have to pursue it beyond simply responding to the office action. Now, in the event that you agree with examining attorney at the USPTO that there is a likelihood of confusion, yet you’ve determined that you were the first to use the mark, that’s really when your best options come into play. And like I said, you can start with a letter to the current mark owner setting forth your basis for a likelihood of confusion and, therefore, trademark infringement in hopes of them either abandoning their application or actual registration, or, ultimately, the two of you may be able to agree in what’s known as a consent agreement so as to allow both of your marks to be registered. In the event that the trademark applicant or registrant doesn’t agree with you and doesn’t want to resolve the matter, you might be forced to file either a trademark opposition if the mark is pending or a trademark cancellation if the mark is actually registered. Once again, these are very specific procedural and substantive matters that require, in most instances, the advice of legal counsel, and in particular, experienced trademark counsel. Therefore, you would be well served speaking to trademark counsel before trying to handle any of these matters on your own. Ultimately, a likelihood of confusion refusal in an office action raises many issues that can subject you to trademark infringement claims or, in the alternative, provide you with a basis for trademark infringement claims against others.
So, once again, when you get a likelihood of confusion refusal in an office action, don’t simply jump and respond to that office action arguing that there is no likelihood of confusion. Instead, determine whether or not you were the first to use the mark, determine whether or not the goods or services are, indeed, so similar as to create a likelihood of confusion and then determine whether or not you want to proceed with responding to the office action, as opposed to filing a trademark opposition, a trademark cancellation or possibly a trademark infringement lawsuit. And, ultimately, do not discount the possibility of resolving the matter entirely by reaching out to the other side or their attorney and seeing what kind of resolution is possible.
So, once again, this has been Brian Hall addressing a common trademark issue that occurs with trademark applicants and office actions dealing with likelihood of confusion.
You’ve been listening to Trademark Law Radio. Whether you are facing a trademark infringement, licensing, monitoring or trademark registration issue, we have a trademark attorney ready to answer your questions.
As a founding partner of Traverse Legal, PLC, he has more than thirty years of experience as an attorney for both established companies and emerging start-ups. His extensive experience includes navigating technology law matters and complex litigation throughout the United States.
This page has been written, edited, and reviewed by a team of legal writers following our comprehensive editorial guidelines. This page was approved by attorney Enrico Schaefer, who has more than 20 years of legal experience as a practicing Business, IP, and Technology Law litigation attorney.
