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

Tips for How to Respond to Trademark Office Actions Based on Likelihood of Confusion – Example Includes “Software”

How to Respond to Trademark Office Actions
Trademark Selection Hurdles

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.   

Trademark Office Examination Hurdles

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.

Likelihood of Confusion Issue Raised in Trademark Office Actions

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). 

Therefore, when Applicants respond to trademark Office actions, they must determine whether the parties’ respective goods/services are related such that they may be viewed by consumers as originating from the same source.

Likelihood of Confusion and Software Products

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 and even clothing vs. hand bags and clothing vs. jewelry 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 and fields of use for 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 needleCommon Trademark Attorney Mistakes

In 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.  Rather, it’s the evidence that supports well-crafted arguments designed to convince the Trademark Examiner that the parties’ respective goods/services, including software products, are not of the type that would originate from the same source.  Furthermore, arguments should include whether the marks are confusingly similar and whether relevant buyers would reasonably believe that the parties’ respective goods/services are of the type that would originate from the same source and/or whether those goods/services travel in the same  channels of trade to the same class of buyers.  

A big error that attorneys make when responding to trademark application Office action 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 trademark Office action refusal. 

Strategies for How to Respond to Trademark Office Actions  Based on Likelihood of Confusion 
Respond to Trademark Office Actions
Navigate this Slippery Slope!

Below are examples of arguments and positions that we consider when  responding to trademark Office actions based on likelihood of consumer confusion between marks for software:  

1. 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.  [Explain why]

2. Applicant’s and cited registrant’s respective software products are used to carry out discrete, specific, and, most importantly, unrelated tasks.   [Explain why]             

3. 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. [Explain]

4. 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.   

5. 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.  [Explain why]

6. 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…  

Conclusion – How to Respond to Trademark Office Actions

Before drafting that “creative” and “beautifully-written” trademark Office action 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 and well-crafted arguments in favor of registration.

Contact Us for assistance with U.S. and/or global trademark protection.