The existence of similar registered trademarks or trademark applications filed for registration is a common ground for refusal. Upon receiving such a refusal, the Applicant usually has the following questions:
- Why was my application refused if the cited trademark is not identical?
- Does this mean that I will not be able to register the trademark?
- Do I need to rebrand now?
In fact, the USPTO refuses the registration not only when the applied-for mark is identical to the existing mark or application, but also when they are similar to the point of confusion.
Similarity is assessed according to various criteria, which are called DuPont Factors. There are 13 factors:
That is why, when preparing a response to a preliminary refusal, it is important to determine which factors to appeal to in order to overcome the Office Action.
You can find detailed information on likelihood of confusion in the article: How to Reduce the Risk of Trademark Refusal Based on Likelihood of Confusion.
As a trademark law firm, Ortynska Law has successfully responded to the Office Action refusing registration of the trademark SKIPPER’S, thoroughly assessing the likelihood of confusion factors in the response.
SKIPPER’S is a gift shop in Harlem, district of New York City, which provides a different variety of goods: from books, stationery, home decor, housewares, apparel, clothing accessories, bags, cosmetics, to local products associated with New York City, and especially with Harlem.
After filing the trademark application to register the trademark SKIPPER’S, the USPTO refused registration due to a perceived likelihood of confusion. The USPTO has stated that SKIPPER’S trademark is likely to cause confusion with earlier registered marks SKIPPER and SKIPPER’S REMEDY for the following reasons:
- Both marks share the allegedly dominant element “SKIPPER”;
- The Client’s retail bookstore and gift shop services allegedly overlap with the existing marks’ services: an online marketplace for educational materials and online gift shops selling coffee, clothing, and drinkware.
It was stated by the USPTO that consumers could mistakenly believe the services come from the same source.
As SKIPPER’S trademark representative, trademark attorney Mariya Ortynska has prepared the Response to Office Action, providing detailed explanations on why there is no likelihood of confusion in the present matter.
In the response, relevant DuPont factors were carefully addressed:
The Marks Are Dissimilar When Considered as a Whole: There are phonetic and semantic differences between Applicant’s and Registrants’ Marks: different number of characters and sounds, the possessive case in the trademark SKIPPER’S, and the additional wording REMEDY, which, in result, changes the overall commercial impression.
The Nature of the Services Is Markedly Different: The Applicant’s mark SKIPPER’S is applied for gift shop services, which focus on celebrating and supporting Harlem’s culture and community. Unlike cited marks, SKIPPER’S is not used for educational platforms or gift shops related to coffee culture.
Moreover, such factors as target audience, narrow scope of protection due to a crowded field, and trade channels were taken into account during preparation.
As a result, the likelihood of confusion refusal was withdrawn and the SKIPPER’S trademark received a favorable response from the USPTO, gaining the opportunity to proceed toward registration.
“I would have never been able to navigate the USPTO processes without Mariya’s knowledge and representation. She guided me through each step, clarifying questions the examining attorney had for my case along the way. My business’s identity is far stronger and more protected because of Mariya’s help!”
shares Claire, the owner of the brand.
Receiving an Office Action is one of the various challenges throughout the trademark registration process. However, Office Actions can often be overcome by submitting complex responses based on careful analysis. Ortynska Law provides assistance in drafting and filing arguments. You can find detailed information on the Office Actions in the article: Trademark Office Action: What Does It Mean & How to Overcome It
If you receive an Office Action and need legal consultation or assistance in responding, book a consultation with Ortynska Law to receive a tailored strategy.
Prior results do not guarantee a similar outcome.