Preface:

When we register a trademark in the United States, sometimes it is inevitable that due to inadequate preliminary search or excessive love for the trademark, we may take chances and find that the submitted trademark conflicts with a registered or pending trademark. At this time, the applicant will ask: Will this situation necessarily lead to the rejection of the application? How should we respond if we really encounter such a situation?

Today's' Frequently Asked Questions about US Trademark Registration ', let us answer for you: When our newly submitted trademark application conflicts with a registered or pending trademark, is it necessarily rejected? How should we respond?

In US trademark applications, conflicts with registered or pending trademarks do not necessarily result in rejection, but targeted strategies need to be adopted based on the criteria of likelihood of confusion.

1、 Criteria for determining trademark conflicts

According to Section 2 (d) of the Langham Act and USPTO review guidelines, the following conditions must be met simultaneously to establish a conflict:

1. Trademark similarity: significant similarity in text, graphics, pronunciation, or meaning (such as "Nike" and "Nikee").

2. Relevance of goods/services: covering the same or related categories (such as Class 25 clothing and Class 35 retail services).

3. Commercial channel overlap: Selling through the same channel (such as online platforms or physical stores).

4. Consumer confusion possibility: Ordinary consumers may mistakenly believe that there is a correlation between the two.

Exception:

If the conflicting trademark has not been used for three consecutive years (as evidenced by an affidavit in Section 8), or if the applicant can prove a long-term coexistence history (such as no actual confusion cases for more than 10 years), it may exceed the conflict limit.

2、 How to deal with trademark conflicts and rejection?

Stage 1: Receiving Review Comments (Office Action)

There are two strategies to solve this:

Strategy 1: Legal Defense

Submit a response with a focus on arguing:

① Trademark differences: By comparing the shape, pronunciation, and meaning of characters (such as "Apple" electronic devices and "Apricot" fruits).

② Product/service differentiation: Provide market data to demonstrate that the target consumer groups are different (such as medical equipment and toys).

③ Weakening the distinctiveness of the trademark: If the cited trademark is a generic term (such as "Ultra"), it can be claimed that its protection scope is limited.

Strategy 2: Limit the scope of goods

Modify the product description in the application to exclude parts that overlap with the cited trademark (such as limiting "clothing" to "professional sports protective clothing").

Stage 2: Enter the opposition procedure

Strategy 1: Reconciliation Negotiations

① Negotiate and sign a Coexistence Agreement with the other party, specifying geographical, channel, or product restrictions (such as offline sales only).

② Key clause: It is necessary to clarify the liability for breach of contract and the dispute resolution mechanism (arbitration takes priority).

Strategy 2: Evidence confrontation

① Submit a consumer survey evidence report (costing approximately $20000) to prove that there is no actual confusion.

② Supporting by citing precedents (such as the "Multifactor Balance Test" in In re E.I. du Pont de Nemours&Co.).

Stage Three: Obstacles to Registered Cited Trademarks

Strategy 1: Revoke the cited trademark

① Based on Abandonment: Submit a Cancellation request to TTAB, requesting the other party to provide evidence of past 3 years of use (15 USC § 1064).

② Based on Genericide: for example, "Kleenex" has been regarded by the public as a generic name for tissues, and the trademark can be claimed to be invalid.

Strategy 2: Apply for coexistence registration

To obtain registration through the Consent Agreement, it is necessary to prove:

① Market coexistence for more than 5 years without confusion complaints;

② The trademarks of both parties have significant distinguishing designs (such as color and font).

IIIRisk prevention suggestions for trademark conflict rejection

1. Comprehensive screening before application:

Use USPTO's TESS database for similar trademark searches, combined with AI trademark analysis tools such as TrademarkNow to assess conflict risk.

2. Design differentiated trademarks:

Avoid using industry jargon and add graphic elements or compound words (such as "SnapChat" instead of "Chat").

3. Establish a chain of evidence for use:

Retain early sales records and advertising data for claiming Common Law Rights.

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