Trademark Titan™ Blog

Information for in-house counsel, brand owners and entrepreneurs. Committed to international trademarks, copyrights, branding and other IP issues.

Trademark Titan™ Blog  - Information for in-house counsel, brand owners and entrepreneurs. Committed to international trademarks, copyrights, branding and other IP issues.

United States Trademark Registration and Protection: Five Potentially “Fatal” Mistakes Made by U.S. and Foreign Brand Owners

United States Trademark Registration and Protection: 

Five Potentially Fatal Mistakes Made by U.S. and Foreign Brand Owners

Seeking United States trademark registration protection is full of traps for the unwary, not only for pro se applicants but also for attorneys that step outside of their every-day specialties. This post focuses on five trademark traps (and there are many others) that U.S. and foreign brand owners make when seeking U.S. trademark registration and protection.

U.S. Patent and Trademark Office Campus

1. United States is not a “first-to-file” country. Because many foreign trademark applicants are domiciled in countries that grant exclusive trademark rights to those that file and register first, they fail to understand that trademark rights in the United States are created based upon trademark use rather than federal trademark registration. Thus, even if there are no pending trademark applications or registrations on the United States Patent and Trademark Office (“USPTO”) database for the same or similar mark that does not mean that a trademark is available for use and registration.


  • In 2008, Company A begins using the mark APEX in San Francisco for insurance services and begins expanding into neighboring states.
  • Company A does not seek federal trademark registration.
  • In 2011, Company B begins using the mark APEX in NYC for insurance services and secures a U.S. trademark registration for its mark and services.
  • Although Company B is the first to file a trademark application with the USPTO for the mark APEX, Company A may still object to the filed application for APEX via an opposition proceeding or seek cancellation of a resulting registration, within a certain period of time, on the basis of priority of use rights.

It is well established that the first company to use a mark in the U.S. (on a systematic and continuous basis) has priority not only with respect to use of the subject mark for the associated, and related, goods/services (in the geographic regions within which the mark is used) but also with respect to federal trademark registration.

For that reason, it is imperative that companies undertake a comprehensive trademark search not only for marks on the USPTO database but also for common law trademarks (those in use but not federally registered) as well as business names to ensure that the proposed mark is available.

Failure to undertake such review is risky and may result in thousands, if not hundreds of thousands, of dollars in litigation costs and re-branding efforts.

Read more about how trademark rights are created here.

2. Lack of bona fides (navigating this slippery slope). Under U.S. trademark law, brand owners may file U.S. trademark applications either before or after their marks launch. If they file before brand launch, they must have a bona fide intent to use the applied-for mark for the listed goods/services in U.S. commerce as of the trademark application filing date.

We Understand That Getting From Point A to Point B is Not Always a Straight Line

U.S.-based (and foreign) applicants may file, what is known as, an intent-to-use (a/k/a 1(b)) trademark application prior to brand launch; however, they must ultimately use the mark in U.S. commerce before a registration will issue.

Unlike U.S.-based applicants, however, foreign applicants may secure U.S. trademark registration without using the mark in the U.S. prior to registration issuance under Section 44(e) (based upon a foreign registration) and Section 66(a) (based upon a foreign registration and filed via the Madrid Protocol).  Those filing basis still require foreign applicants to have a bona fide intent to use the applied-for mark in U.S. commerce for the listed goods/services.

Lack of a bona fide intent to use a mark for the goods/services listed in an application (i.e., lack of a written plan to use the mark for the goods/services or actions taken to bring the mark/brand to market) renders an application and resulting registration vulnerable to attack by third parties on the basis the applicant lacked the pre-requisite “bona fide intent to use” the mark in the U.S.

This is problematic for many foreign applicants because many rely upon their home country trademark registration(s) for securing U.S. trademark registration, which may list goods and/or services of which they never intend to sell under the applied-for mark, which is permissible under their own country trademark law. 

For those reasons, U.S. and foreign applicants should list only those goods/services in their U.S. trademark applications that they intend to sell in U.S. commerce or run the risk of third party challenges and losing valuable trademark rights.

To read more about lack of bona fides, read my blog post here.

3. Trademark use is required to maintain registrations. As mentioned above, foreign applicants may secure U.S. trademark registration without having used an applied-for mark in U.S. commerce prior to registration. At a certain point, however, the foreign registrant must show use of a registered mark in the U.S. in order to maintain its registration.

During the fifth and sixth year of registration, and at the tenth-year anniversary and every ten years thereafter, a trademark registrant must provide evidence of use of the mark, as registered, in the United States for the goods/services listed in the registration.  Failure to show valid use of the registered mark in the U.S. during those periods will result in the cancellation of a registration by the USPTO.  Note that even slight changes to the manner in which the mark is used may render the registration invalid (i.e., using the registered mark APEX as “APEX PLUS”).

Failure to use a registered mark in a manner acceptable to the USPTO may result in application abandonment or registration cancellation.  Furthermore, a mark not used during a consecutive three-year period post registration is vulnerable to cancellation on the basis of non-use.

For more information about acceptable specimens of use, read my blog post here.

4.  “I searched the USPTO trademark database and my name is available because a “competitor” abandoned its trademark registration for the same mark”

Unfortunately, it’s not that simple.  Trademark rights in the U.S. are not

Things are not always what they seem

created based on trademark registration; they are based on actual use.  Therefore, if the owner of the now cancelled trademark registration is still using the once-registered mark, that continued use would trump the “new-comer’s” use and even a “new-comer’s” issued trademark registration.

Don’t get caught in this trademark trap…trust me.

5. “I secured my “Business Name LLC” with the state, so I own the name and trademark”

Although you have successfully registered “Business Name LLC” with state “x” … that does not give you any legal right to use that name and corresponding trademark in consumer-facing marketing and business activities if that name infringes existing third-party business name and/or trademark rights.

States typically review names to ensure that they are “distinguishable on the record” from other registered business names for the purpose of identifying a specific entity from another, not whether the names are “confusingly similar” (a/k/a infringing). 

The only way to know if a selected name is available for use and registration is to conduct initial trademark and business name clearance.

You can read more about trademark clearance here.  


Intellectual property law (patents, copyrights, trademarks, trade secrets) is filled with traps for the unwary; and in many cases IP attorneys specialize in one of those areas only.  Just as you would hire a heart surgeon for your heart surgery, hire a “trademark attorney” for your trademarks and not “an attorney that does trademarks” because, as I have said before, there is a difference and it could mean the difference between life and death for your brand launch…  


Roger Bora is a former U.S. Trademark Examining Attorney, a partner in a major law firm, the creator of this blog and, most importantly, a husband and a father of an amazing 13-year-old son.

How to Protect Trademarks Internationally: Part Three of a Three-Part Series

How to Protect Trademarks Internationally:

Part Three of a Three-Part Series

If you have not read parts one and/or two, I recommend that you do so here   (Part 1) and here (Part 2) before reading this post.

Part 3: International Trademark Filing Strategies and Critical Post Registration Requirements

Once brand owners have identified their core marks and products, selected the primary countries of interest, identified which of those countries are members of the Madrid Protocol and European Union, as well as any other country pacts for filing strategy, such as Benelux (covering Belgium, Luxembourg and Netherland), African Intellectual Property Organization and African Regional Intellectual Property Organization, with each covering certain African countries, and undertaken proper trademark clearance in the relevant countries, they are ready to formalize their trademark application filing strategy.

As a first step, brand owners should undertake a cost estimate review for the selected countries and marks.  The brand owner is then ready to prioritize the primary countries and marks based upon its annual budget.  As discussed in Post 1, the filing strategy may consist of a one to three year (or more) “rolling” filing strategy depending upon budget and, as discussed in Post 2, you may spread out the filing costs during the six-month priority period provided by the Paris Convention.  

I. International Trademark Filing Strategy – Example

Selected countries of interest:

  • Brazil, Canada, China, Columbia, France, Germany, India, Mexico, Norway, Panama, Poland, Spain, Sweden, Switzerland, U.K., and all of the EU member states if economical

How should the company proceed with trademark protection?  Should the company use the Madrid Protocol? European Union trademark filing? Or national filings? Or possibly all three?

The company should first consider the risks with respect to utilizing the Madrid Protocol and European Union trademark filing systems with the primary risks being those discussed in Post 2.  If the risks are low, the next step is to determine the Madrid Protocol and European Union member countries and the countries requiring national filings.

Madrid Protocol member countries/jurisdictions (based on my example):

  • China, Colombia, France, Germany, India, Mexico, Norway, Poland, Spain, Sweden, Switzerland, U.K., and the EUTM (covers all 28 EU member countries)

EU Member countries (based on my example):

  • France, Germany, Poland, Spain, Sweden and U.K.

Non-member countries requiring national filings:

  • Brazil, Canada, Panama

A few important considerations:

  • Brexit. With the U.K. possibly exiting from the EU, it is absolutely prudent to also file a national U.K. trademark application if a EUTM application is filed in lieu of national EU country filings.
  • China. Although China is a member of the Madrid Protocol, it’s strongly recommended that China not be designated via Madrid application due to the short time period within which a trademark applicant must respond to an office action.  Instead of designating China via the Madrid Protocol, companies should instead file national applications via local counsel.
  • EUTM. If the company is confident that its mark is eligible for registration in all EU member counties (no major potential third party objections or non-distinctiveness issues), or is willing to take the risk in exchange for securing broad trademark protection, the company may elect not to file national EU member country applications (e.g., France, Germany, Poland, Spain, Sweden and U.K.) in exchange for protection in all 28 EU member countries via the European Union trademark, which may be filed via the Madrid Protocol application.
  • Madrid Protocol and EUTM vs. national filing cost comparisons:            
    • Madrid Protocol vs. national filings (for Madrid Protocol member countries) can provide substantial savings.                   
    • In some cases, those savings can be over 40%!
  • EUTM vs. individual EU member national trademark applications:        
    • Average national filings per country: ~$1700 (assuming there are no obstacles to registration and might only cover one class of goods/services for that cost).
    • EUTM for ALL 28 countries: ~$3500! (assuming there are no obstacles to registration and may cover up to three classes of goods/services for that cost).

Potential Strategy:

File Madrid Protocol application for:

  • China, Colombia, France, Germany, India, Mexico, Norway, Poland, Spain, Sweden, Switzerland, U.K., EUTM

Requirement: a brand owner must own either a pending home country trademark application(s) and/or registration(s) that would form the basis for the Madrid application.

National trademark applications for:

  • Brazil, Canada, China, Panama

Paris Convention:  If Paris Convention priority is available, the brand owner may opt to file the Madrid application first then file the national applications over several months to spread out the filing costs. 

As you can see, there are many filing considerations and options for seeking global trademark registration protection.  Rather than aimlessly filing global trademark applications on a “hit-or-miss” basis, brand owners should first create a well-crafted strategy, one that minimizes risks and costs while maximizing protection, and then execute that strategy while always maintaining flexibility for change, when necessary.

II. Critical Post-Registration Requirements

Once brand owners secure trademark registration protection for their marks and products, there are certain actions they must take to ensure that their rights remain active and enforceable, including the following:

  1. Use: If registered marks are not used for the registered products for three consecutive years post registration (five in some countries), their registrations become vulnerable to cancellation by third parties for non-use.
  1. Proper Use: Using marks improperly may render them generic terms with all trademark rights being lost.  Did you know that aspirin, escalator and yoyo were all once trademarked terms?  Did you know that the mark Google® is being challenged as being a generic term for searching the Internet?  “You won’t google that! You’ll search the Internet via Google® search engine for that.”  That issue is another post…at another time.
  1. Trademark Licenses: Some countries require trademark registrants to record trademark licenses with their Trademark Offices if registered marks are licensed to third parties for use in their countries.  Failure to record a trademark license in those countries renders a trademark’s registration vulnerable to cancellation for non-use, since absent the recordal, the mark is deemed not in use by the trademark owner. 
  1. Maintenance: After registrations issue, their owners must make periodic maintenance filings and pay periodic maintenance fees to maintain active and enforceable trademark registrations. Failure to make those filings will result in the cancellation of issued registrations, resulting in the loss of trademark rights.

III. Closing

To summarize, trademark owners must recognize that trademark rights are country specific, there are first to file countries and first to use countries, and trademark registrations are essentially government issued licenses for the right to import and export branded products and conduct business in a country.

Companies should audit their trademark portfolio annually and prioritize their trademarks, products and countries of interest.  Companies should also actively manage their portfolio and implement protocols for trademark clearance and enforcement strategies and – most importantly- develop an overall focused strategy that takes into consideration the budget while minimizing risks and maximizing protection.

Brand owners that fail to implement a coherent and consistent global trademark strategy will likely find that they have failed to maximize brand protection, possess inadequate trademark protection for key brands and products in key markets, have not minimized business and infringement risks and consistently run over budget.

IV. Your Assignment and Action Items

  • Undertake a cost estimate review for your primary country filings;
  • Prioritize the primary countries and marks further based upon the estimated costs for registration vs. the annual budget;
  • Prepare a one to three year (or more) “rolling” filing strategy, if necessary; and
  • Review the strategy every six months or year and remain flexible.

Roger Bora is a former U.S. Trademark Examining Attorney, a partner in a major law firm, the creator of this blog and, most importantly, a husband and a father of an amazing 13-year-old son.

How to Protect Trademarks Internationally: Part One of a Three-Part Series

How to Protect Trademarks Internationally:

Part One of a Three-Part Series

Overview / Introduction of Three-Part Series

In this three-part blog series, I will discuss international trademark registration planning and protection strategies.  Specifically, I will cover the following topics: 

Part 1: Global trademark protection strategy and planning considerations;

Part 2: International treaties and laws strategically used for global trademark protection; and

Part 3: International trademark filing strategies and critical post registration requirements. 

If you listened to my Podcast Episode 2, you will know that I discussed how international trademark rights are created.  If you have not listened to Episode 2, I suggest that you do so before reading this post (it’s only 8 minutes long): Podcast Episode 2 is here

As I discussed in Podcast Episode 2, there are two primary ways in whichEarth international trademark rights are created and they are as follows: 

  • “First to file” principle – meaning whoever files a trademark application first for certain products or services and secures trademark registration is generally considered the trademark owner in the majority of countries; and  
  • “First to use” principle –  meaning whoever uses a mark first for certain products or services is typically considered the owner of the mark – but only in the geographic regions in which the mark is actually used, leaving open geographic regions where the mark has not been used for someone else to create rights in the same or confusingly mark. 
    • For that reason, securing trademark registration rights in first to use countries is still recommended in order to secure and reserve future geographic expansion rights in geographic regions where the mark has not yet been used. 

Before proceeding any further, I want to first explain that use of the terms “product” and “products” also refer to and cover “services” and use of the terms “marks” and “trademarks” also refer to “service marks” as the legal standards for both are essentially the same.  So for those service providers reading this post…no worries as the legal standards for products apply equally for services.       

As a starting point in the brand expansion process, it’s important to understand that U.S. – or home country – trademark rights and registrations do not provide brand owners with the right to freely expand into other countries as trademark rights are country specific.  

Therefore, prior to brand and product expansion into new countries, trademark owners must first determine whether their use of “their” trademarks in a new country may actually infringe third party trademark rights already established in that country by undertaking trademark clearance review.  This initial trademark clearance step will provide an assessment of the risks of infringement, and potentially avoid the need to rebrand after product launch should a third party allege infringement and possibly file an action, and whether the mark is distinctive and thus eligible for trademark registration protection.

Part One: 

The Strategic Plan & Overview

As a first step, brand owners should prepare a filing strategy that is based upon their core trademarks and products and their marketing and business strategy.

With respect to trademarks, they should be prioritized based upon their value to the company:

  • First tier marks are House marks, which are those marks used across product lines, and major product names; 
  • Second tier marks are important product names used in major markets; 
  • Third tier marks are valuable names that are used in certain regions as well as names used as sub-brands; and 
  • Fourth tier marks are typically slogans and non-traditional marks (such as trade dress, sounds and configuration designs). 

With respect to products, companies should focus on top-tier countries and jurisdictions where: 

  • The majority of sales are taking place;
  • Key customers are located;
  • They have distributors and licensees;
  • They are manufacturing; and
  • They plan to launch their products in the near future (1-2 years). 

Nasa ImageOnce the core marks and products, and key countries and jurisdictions, have been identified, brand owners should plan their trademark application filing strategy accordingly to maximize protection, reduce uncertainty and minimize overall future registration costs. 

Companies should also audit their trademark portfolios periodically for any gaps in protection.  The audit should include whether there are any core trademarks and products not adequately protected in priority countries either due to recent product line expansions, acquisitions or newly opened markets. 

  • Once audits are completed, brand owners should review their current filing strategy and feel free to modify it, as necessary, to ensure that priority is maintained. 

As companies prepare their global filing and protection strategies, they should plan a consistent strategy that covers core marks and core products and avoid the – what I call – “reactive strategy” – one that lacks focus and typically “wastes” marketing’s limited resources.  A “reactive strategy” is just that – a strategy that reacts to the “next emergency” at the detriment of protecting the company’s core marks and products and one that exhausts the annual budget.  

And speaking of budget, due to the costs of protecting trademarks globally, and believe me they are much higher than most brand owners expect, companies should consider preparing a rolling filing strategy that may be carried out over 1 to 2 years or even 3 plus years depending upon the size of the portfolio and the number of relevant countries.  For that reason, global brand protection should be carefully considered and, in most cases, companies will need to make difficult decisions regarding which of their brands and products to protect, when to protect and where to protect.  


Once the core marks and products have been identified and the strategy has been prepared, the next step is to conduct trademark clearance searches in each of the relevant jurisdictions and countries. These searches may find third party trademark applications and registrations and possibly common law trademarks that may potentially block the use and registration of a brand name in a selected country. 

If the searches identify potentially high infringement risks in certain countries,IMG_2012 the company may decide whether to seek cancellation of high risk registrations, seek purchase of high risk registrations and trademarks in order to clear the path for its own trademark registration and rights or adopt a different name altogether to avoid uncertainty and potentially costly trademark litigation and re-branding.

The searches should also reveal whether the proposed name is distinctive (meaning that it functions as a trademark, or source identifier) and is actually eligible for trademark registration and protection.

The searches will also look for cultural and connotation issues. For example, in China the number four represents death. For that reason, companies should ensure that their trademarks do not require modification for cultural and translation issues before brand launch.

Homework Assignment and Action Item

Identify your core marks, key products and priority countries/jurisdictions based upon business factors that are most relevant to your business, which may include some of the factors I have listed above.  Then rank them in order of value to the company’s “bottom line.”

In Post 2, I will outline key filing options for securing global trademark registration for your key brands.

Roger Bora is a former U.S. Trademark Examining Attorney, a partner in a major law firm, the creator of this blog and, most importantly, a husband and a father of an amazing 13-year-old son. 

Trademark Titan™ Blog’s Tuesday Tip: Acceptable Trademark Application Specimens of Use – What are Point of Sale Displays?

Acceptable Trademark Application Specimens of Use – What are Point of Sale Displays?

In my blog post here, titled “Trademark Application Specimens of Use: What is an Acceptable Specimen of Use? I mentioned there are instances when trademark applicants may need to rely upon a “point of sale display” to show proper trademark use for products if they don’t use the mark in a traditional sense (i.e., labels affixed to the goods, mark depicted on the goods, mark depicted on packaging).  In those cases, the Applicant may submit, what is known as, a “point of sale display.” Point of sale displays must adhere to strict guidelines, of which I have discussed and outlined below.

What are Point of Sale Displays?

A point of sale display (a/k/a displays associated with the goods) must be associated directly with the goods being offered for sale.  The display must depict the trademark prominently.  Displays associated with the goods comprise various types of point-of-sale materials, such as banners, window displays, menus, product literature used by outside sales representatives and even websites that allow for online orders.

The “displays” must be designed to catch the attention of purchasers and prospective purchasers as an enticement to make a sale.  Furthermore, the display must prominently depict the applied-for mark and associate it with, or relate it to, the goods such that an association of the two is inevitable. 

Important note: Promotional materials, such as brochures and webpages, that simply describe the goods and their characteristics or serve only as advertising literature are not per se “displays,” thus do not qualify as acceptable specimens of use for trademark application and registration purposes (for products). 

In order to rely upon a point of sale display as a trademark application specimen of use for goods, the display must contain each of the following items:

(1) use of the subject trademark;

(2) near a picture of the goods or detailed description of the properties of the goods such buyers know precisely what they are buying; and

(3) specific information on how to order the goods, i.e., telephone number or online shopping cart.

Trademark Manual of Examining Procedure §903 illustrates how the following webpage is an acceptable point of sale display, as it meets all three requirements:

Blog Post Poiint of Sale Display

  • Remember, the display must directly associate the mark and goods such that an association of the mark and goods is inevitable.  In other words, the mark must be perceived as the brand name for the goods.  Using a trademark on the top of a website, for example, that would be perceived as a service mark for online retail store services and not the brand name for the goods in question would not be an acceptable display associated with the goods for trademark application purposes.   
  • The U.S. Patent and Trademark Office may not accept point of sale materials that do not clearly provide information on how to directly place an order.

The next time you decide to launch a new trademark for goods, but have no plans to affix the mark directly to the goods in any manner, you should consider alternative types of specimens of use for securing registration. 

Roger Bora is a former USPTO trademark examining attorney, a partner in a major law firm, the creator of this blog and, most importantly, a husband and a father of an amazing 13-year-old-son. 

Software, Trademarks and Likelihood of Confusion: How to Respond to a Trademark Office Action

R Logo

With the exponential growth of technology and small businesses over the past twenty years, selecting trademarks that are available for use and registration has become a daunting task for brand owners.  That daunting task began during the .com bubble of the late ‘90s and has continued ever since.  Since then, the U.S. Patent and Trademark Office (“USPTO”) has seen an explosion of trademark application filings as the Internet and technology have removed barriers to entry for small businesses.  The proliferation of new companies has resulted in the proliferation of new company names, trademarks and U.S. trademark applications and issued registrations, which have made the brand name selection and registration process somewhat challenging and potentially costly for brand owners.   

One potentially complex aspect of the U.S. trademark selection and protection process is navigating the USPTO registration process, which may entail battling conservative and, in some instances, unreasonable Trademark Examiners that refuse registration.  One ground upon which an Examiner may refuse registration is “likelihood of confusion” or, in other words, that the Applicant’s mark is too similar to a mark (or marks) already listed on the USPTO database. 

To read more about what constitutes “confusingly similar marks” read my post here.

In any trademark infringement and likelihood of confusion analysis, the primary issue is whether a selected mark is likely to cause consumer confusion as to the source of certain products and/or services.  For example, if consumers are familiar with the mark ACE for running shoes and a “new comer” launches the ACE brand of running pants, it’s reasonable to conclude that consumers would be confused as to the source of those goods (they would reasonably believe that the maker of ACE™ running shoes has expanded its product line to include ACE™ running pants).

Unlike the likelihood of confusion analysis for other types of products, such as clothing and office supplies, where the analysis may focus primarily on clothing vs. clothing (generally) and office supplies vs. office supplies (generally), the analysis for software does not focus generally on software vs. software.  Rather, the analysis for software must dive much deeper into the functionality of the software, trade channels, buyers and buyer sophistication.  Accordingly, when a mark for software products is refused registration on the ground the mark is too similar to another mark for software, you should first undertake a full review and analysis of the parties’ respective software products and delineate the differences in their functions, uses, channels of trade and buyers, if possible.

Threading the needleIn many cases, the difference between success and failure with respect to overcoming a trademark application refusal depends upon how well you “thread the needle” and make compelling arguments in favor of registration.  In most cases, it’s not the “beautifully-written” arguments that win, it’s the evidence that supports well-crafted arguments designed to convince the Trademark Examiner that the parties’ respective software products are not of the type that would originate from the same source, and buyers would not reasonably think otherwise, and/or that they would travel in different channels of trade to different classes of buyers.

A big error that attorneys make when responding to trademark application refusals is submitting the “tossed salad” response; making all arguments from all angles to see which argument “sticks” with the Examiner.  Having been a USPTO trademark examining attorney, I can tell you that’s a big mistake and brings the Applicant’s attorney’s credibility into question, which ultimately can hurt the brand owner.  Simply put, if outside counsel does not understand which arguments are compelling for a case and prepares a “tossed-salad–response,” the Trademark Examiner simply cannot take any of the arguments seriously.  For that reason, gathering compelling evidence first and only making relevant arguments is the best strategy for overcoming any likelihood of confusion refusal. 

Software, Trademarks and Likelihood of Confusion: How to Respond to a Trademark Office Action  

Below are examples of arguments and positions when responding to trademark refusals based on likelihood of consumer confusion for marks for software:  

  • The functionality and purpose of Applicant’s software are entirely different and distinct from the functionality and purpose of the software listed in the cited registration.   
  • Applicant’s and cited registrant’s respective software products are used to carry out discrete, specific, and, most importantly, unrelated tasks.    
  • It is well settled that an Examining Attorney must not only consider the similarities of the marks, but must also compare the goods and/or services to determine if they are related such that confusion as to origin is likely. The Examining Attorney must also consider all circumstances surrounding the sale of the goods and/or services, such as the marketing channels and the identity of the prospective purchasers.   
  • Applicant submits herewith information about its products and services at Exhibit A and information about the cited marks at Exhibit B, which clearly delineate the differences between parties’ respective software products.  The materials attached in Exhibit A clarify that Applicant’s software products are software development tools and applications, while Exhibit B clarifies that the cited registrant’s highly technical and sophisticated software is used for data storage systems, which would be used by large commercial and/or government agencies. Applicant’s products and services, however, are used by software developers.  Accordingly, the functionality of the parties’ respective software products is different and their software products would likely travel in different channels of trade to different types of buyers for different uses, which renders consumer confusion unlikely. 
  • Although each of the parties offer software products and/or services, those products and services are used in different market niches and for different applications (data storage systems vs. computer software development tools), which further renders confusion between the parties’ marks unlikely.  Goods may fall under the same general product category but operate in distinct niches.  When two software products are part of distinct sectors of a broad product category, they can be sufficiently unrelated such that consumers are not likely to assume the products originate from the same source. 
  • It is well-settled that the USPTO recognizes the “un-relatedness” of distinct product niches.  A cursory review of the USPTO database indicates that the Office has consistently permitted registrations of identical and near identical marks for computer software as long as the functionality of the software products does not overlap and the software products are not of the type that would typically originate with the same source.  Applicant submits herewith third party registrations for the identical mark for software…  

Before drafting a “creative” and “beautifully-written” response that sounds great and impresses the reader, the attorney should first take a step back, understand the technologies, understand the business sectors at issue and gather compelling relevant evidence that supports the Applicant’s position and then prepare credible arguments in favor of registration.