Overcoming Examiner & # 39 USPTO, S Disclaimer Office Action – the likelihood of blending


You filed a trademark for online businesses, which, in your opinion, has the right to the protection of federal trademark. Your search report came back pretty clean, except for federal registration conducted by North Dakota, which uses several similar mark in relation to the travel agency. If you are signed to, you advise your client that there is a likelihood that the sign will be denied because of a previously registered federal trademark. However, you feel that your customer & # 39; s trademark registration of the mark would be approved because your customer & # 39; s sign can be distinguished from the previous sign, although in the same class of the international identification.

After six months, you get the USPTO Office action that the expert trademark believes that there is a likelihood of confusion with respect to the previous character. In the joke, there was a lot of practice, amounting to his tent and told his client that it may be better to try another identical name. However, the likelihood of confusion failures can sometimes be overcome by careful and detailed analysis of the Federal District, of DuPont factors arising from the In Re EI du Pont de Nemours & Co., 476 F.2d one thousand three hundred fifty-seven 177 USPQ 563 (CCPA 1973),

DuPont factors with & # 39 are: (1) the similarity or dissimilarity of characters in their respectiveties as appearance, sound, connotation and commercial impression; (2) the similarity or dissimilarity and the nature of the goods or services, as described in patent application or registration or connection to a sign is in use; (3) the similarity or dissimilarity determined likely to previous sales channels; (4) The conditions under which and buyers, which sales are made, i.e. "pulse" against cautious complicated procurement; (5) the glory of the previous mark (sales, advertising, the use of length); (6) The number and nature of such characters used in similar products; (7) the nature and extent of any actual confusion; (8) the length of time during and conditions in which there is simultaneous use without evidence of actual confusion; (9) The variety of goods on which the mark with a & # 39; if not used (house mark, "something & # 39; I" mark, product mark); (10) the interface between the market and the owner of the applicable prior mark; (11) the amount to which the applicant has the right to exclude others from using their brand for their products; (12) the degree of possible confusion, that is insignificant or substantially; and (13) any other established fact probative use the effect. See id.

In this sense, it is crucial to provide the examiner with the help and comprehensive analysis of any factors that weigh on your client and # 39; s favor as DuPont factors, basically balancing test.