Has your trademark application received a Section 2(d) likelihood of confusion rejection?

So your trademark application has been refused registration on the basis that your mark is confusingly similar to at least one registered mark. How you do you show no likelihood of confusion? This is where the crowded field argument may help if you can gather sufficient supporting evidence.

How to determine if you should argue crowded field

A crowded field means that there are several third party trademarks that are similar to your applied-for mark. While there may be a high number of both registered and pending marks, coexisting registrations of similar marks by different owners would carry more weight. To determine whether you should argue crowded field, therefore, you first need to see how many registrations and pending applications exist for marks that are arguably similar to yours.

If you can find more than a handful of registrations for similar marks covering overlapping goods or services, make sure that they are not all owned by one entity. The point is to show that your applied-for mark is weak due to the coexistence of several similar marks by different owners.

Here is a checklist of what to consider if you want to argue crowded field:

  • high number of registrations and allowed applications for similar marks;
  • owned by different parties; and
  • slight differences in the marks and goods/services.

How to make the crowded field argument

When you can identify several other registered marks similar to your applied-for mark, you then need to pay attention to their subtle differences. It’s those subtleties that make one mark sufficiently distinguishable from another.

On the other hand, a crowded field argument may be unsuccessful if the differences in the third party registrations are significant. For example, the other registered marks may contain distinctive design elements or non-overlapping goods and services.

What are examples of successful crowded field arguments?

Here are trademarks where a crowded field argument prevailed over a Section 2(d) likelihood of confusion refusal:

Do you really want to argue that your mark is weak?

This is a strategic decision you will want to discuss with your trademark attorney. It might make sense to argue that your mark is weak. On one hand, arguing that your mark might lead to registration. On the other hand, a registration of a weak mark may hinder your efforts to oppose similar marks in the future. Keep in mind that if the argument fails, you end up with written admissions that your mark is not confusable with similar marks which may limit your infringement arguments against third parties.

Need to overcome a Section 2(d) likelihood of confusion Office Action?

Contact experienced patent and trademark attorney Vic Lin at vlin@icaplaw.com or call (949) 223-9623 to see how we can help you prevail over a likelihood of confusion rejection in your trademark application.

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Vic Lin

Startup Patent Attorney, Cofounder at Innovation Capital Law Group
We align ourselves with Davids fighting Goliaths. Our registered patent attorneys help innovators get IP that drives funding, growth and sales. Email or call us so we can get to work on your IP: (949) 223-9623 | vlin@icaplaw.com