【美国商标注册常见问题】想注册的商标与已注册或申请中的商标冲突，是否必然被驳回？应该如何应对？-柏斯特(深圳)国际知识产权服务有限公司

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【 Frequently Asked Questions about US Trademark Registration 】 Will a trademark that you want to register conflict with a trademark that has already been registered or is in the process of being applied for be rejected? How should we respond?

Time: 2025-10-28 Click count: 1126

Preface:

Due to the special nature of the "prior use" system followed by trademark registration in the United States, many applicants tend to prefer the more cost-effective approach of "actual use" when choosing the trademark application method. Before registration, allow the trademark to be used in the US market for a period of time, collect and prepare proof of actual use, and then submit a registration application to USPTO.

However, doing so will inevitably lead to a problem: time difference.

The time available during the actual use and application submission period, if the trademark is targeted by other applicants and the applicant fails to submit the application in a timely manner, the trademark is likely to be registered in advance by others.

At this point, when the applicant who is ready to use evidence submits the application, the submitted trademark will appear Conflict with registered or applied trademarks.

So, the applicant will raise doubts:whenWill the trademark you want to register conflict with a trademark that has already been registered or is currently being applied for be rejected? How should we respond?Today's article provides answers for everyone.

1、 Answer to the question

In the US trademark examination,Conflict with prior trademarks does not necessarily result in rejection of the applicationHowever, targeted strategies need to be adopted based on specific circumstances.

2、 Determine whether conflicting trademarks constitute a "possibility of confusion"

1. Preliminary review criteria

USPTO examiners evaluate trademark similarity and product/service relevance as core factors based on DuPont factors.

Key exception: Even if the trademarks are the same, if the goods/services have no affiliation (such as "APPLE" for computers and "APPLE" for funeral services), they may still be allowed to be registered.

2. Breakthrough point analysis

① Differences in goods/services:

Example: The prior trademark "TIGER" was registered in Class 9 (batteries), and the new application "TIGER" is used in Class 25 (clothing), which may pass the examination due to the lack of class association.

② Trademark differentiation design:

Example: The prior trademark was pure text SUN, and a new application for the SUN graphic logo may be accepted due to significant differences (In re Viterra Inc. case).

3、 Statutory exceptions for non essential rejection

1. Coexistence Agreement

① Applicable conditions:

The trademarks of both parties have not caused confusion in actual use;

The agreement specifies the scope of use, geographical restrictions, and other terms (which need to be submitted to USPTO for filing).

② Successful case:

In the case of Thomas J. Lipton, Inc., the conflict between "LIPTON" and "LIPTON TEA" was resolved through a coexistence agreement.

2. Obtain the consent of the prior trademark owner (Letter of Consent)

① Effect: USPTO usually accepts consent forms, but reserves the final discretion (In re Bay State Brewing Co. case).

② Content requirement: It is necessary to clearly state that there is no possibility of confusion and provide evidence (such as market coexistence records).

3. Partial Disclaimer

Strategy: Disclose exclusive rights to non significant parts of the trademark (such as common vocabulary).

Example: When applying for "CLOUD DATA SYSTEMS", declare the waiver of exclusive rights to "DATA SYSTEMS" to avoid conflicts with the "CLOUD" trademark.

4、 Response strategy

1. Response steps after receiving the review comments (Office Action)