Well, long time no chat over here on the blog am I right?! I have been busy at the firm which is never a bad thing. But, I had a great topic come up in practice this week so I thought hey! Let’s make some content, shall we?
Back to business we go.
The dreaded 2(d) Office Action
You have applied for your USPTO Trademark registration. Awesome, congrats, you’re a smart business owner! But, everything has come to a screeching halt because the trademark examiner handed out a 2(d) likelihood of confusion Office Action. That means the examiner has determined that your trademark is too closely related to another trademark already registered.
This is typically considered a “substantive” office action, and will definitely require the help of a professional (hi that’s me!). The answer involves making legal arguments to the examiner as to why your trademark is actually different than the mark they cited in the action.
Along with expertly crafted legal arguments, there are other strategies to getting over the likelihood of confusion hump with the USPTO. Of those strategies, two options generally prove to be very helpful. Consent agreements and coexistence agreements.
A consent agreement is an agreement that you, the applicant enters into with the party cited in your likelihood of confusion office action. A consent agreement does not automatically help to overcome the 2(d) action, but the examiner will place great weight on this when considering pushing your application through.
A consent agreement should be specific and help to show the examiner why the previously registered party is comfortable with your mark gaining registration. Generally, consent agreements are straightforward and utilized if you as the applicant does not have a ton of bargaining power with the other party. They are usually a bit more focused and can be less costly to draft. This also means it is faster to get these done. A consent agreement is a great route if you’re on a budget with a strict timeline to getting that application approved.
A coexistence agreement is usually more comprehensive than the above. While it is also an agreement in which the party cited in your action agrees to allow you to use your trademark this type of agreement contains more details as to how that mark can be used in the marketplace. These are often utilized when you a) have leverage over the other party and b) the parties don’t believe confusion is likely amongst the consuming public.
Generally, a coexistence agreement contains provisions regarding geographical boundaries for each party use and business expansion, future worldwide trademark rights, and even limitations on social media use and branding. Coexistence agreements are in-depth and take more time to ensure the future is bright for both brands involved.
What option you go with is a decision that must be carefully considered with your attorney. But, just know that a likelihood of confusion office action is not a death sentence for your trademark application. It does need to be handled appropriately, and with the right help, you have a good chance of gaining that registration!
If you have more questions or are interested in working with me, shoot me an email to firstname.lastname@example.org.
Please note that this is not meant to be legal advice for you or your situation, this is merely some legal research and knowledge on the given topic.