I ♡ Trademarks Conference 2025Don’t Jump to Confusions: Overcoming Trademark Refusals Across Borders
Alt Legal Team | January 27, 2025
At the Alt Legal I ♡ Trademarks Conference, on March 18, 2025, IP attorneys Lydia Gobena (Fross Zelnick) and M.J. Williams (Wissing Miller) presented the session, “Don’t Jump to Confusions: Overcoming Trademark Refusals Across Borders.” Download the presentation materials here. Here are some key takeaways from the session:
- Lydia – Some jurisdictions do not examine on subjective grounds, they only examine on absolute grounds and will not consider likelihood of confusion. EU and UK will notify you of conflicting third-party marks but they will not refuse third-party conflicting marks.
- MJ – In the US, there are lots of options to address likelihood of confusion refusals. Has examining attorney met their burden of proof? You may need to amend goods or services to avoid the refusal. You can also rely on market evidence if it supports registration – if evidence shows the registered mark is weak and is entitled to a narrower scope of protection. Letters of consent and coexistence agreements will help because you are in contact with the owner of the cited registration. Additionally, there are expungement and re-examination proceedings and cancelation proceedings.
- Lydia – Some jurisdictions (ex. Canada and China) do not permit or won’t accept letters of consent in likelihood of confusion situation. Sometimes deleting conflicting goods/services or acquiring rights from the third party is your best bet. You can also file a use-cancelation or file an anonymous cancelation in certain jurisdictions.
- MJ – When you make a choice to attack the cited registration, the examining attorney will generally suspend examination. Lydia – Note that suspension isn’t available everywhere (China) so you may have to file backup applications in hopes that you’ll eventually succeed.
- MJ – When dealing with a non-distinctiveness refusal (in the US – mere descriptiveness, misdescriptive, merely a surname, and failure to function (becoming more frequent refusal), generic) you may look to see if your term is in the dictionary, if it is not, that negative evidence can be very powerful. If there is a definition, consider whether it indicates that the term immediately references goods/services in the application. Also look at evidence to see if the terms are necessary for competitors to market their goods/services. If there is there evidence to the contrary that these terms are not necessary, this can help your argument.
- MJ – When overcoming a non-distinctiveness refusal relating to genericness/failure to function, if mark is in use, you can argue that the mark’s use is so extensive that you have an acquired distinctiveness claim (secondary meaning.) You’ll need a substantial amount of evidence including a declaration from client, evidence of sales, investment in advertising, third party press, visitors to website, etc. Alternatively, the client can accept that mark is merely descriptive and you can amend application to the Supplemental Register.
- Lydia – If a mark has been registered in another jurisdictions (especially common law jurisdictions) you can argue that it should be accepted in the US. Otherwise, try another path. Always take the approach that the mark is distinctive. If not, try to prove acquired distinctiveness. In other jurisdictions, if you are concerned about proving distinctiveness, be sure to wait to show use. Note that most jurisdictions don’t have the Supplemental Register. Many jurisdictions have geographic refusals, particularly China and Canada. Some countries allow disclaimers but be mindful of disclaimers in other jurisdictions – make sure they are separate and apart from the mark. In the EU you must show non-distinctiveness across the entire EU. An important strategy is to consider filing national registrations as opposed to filing in the EU as a whole because this may be very difficult to show.
- Lydia – Outside the US some countries use the Nice classification system, and to complicate matters, some use an updated version and others use a non-updated version, and others don’t use Nice at all. In some jurisdictions, you cannot file for service marks, so you need to think about what goods you can file that will give you some protection. Also note that some countries have sub-classes (China) where you can have identical marks but because goods and services fall into different sub-classes, they can coexist and the trademark office won’t consider the marks confusingly similar.
- MJ – In the US, goods and services refusals are usually not fatal to an application. The only instance where a goods/services refusal is fatal is if every good/service has been objected to. I often refer to the Trademark ID Manual to see if the exact description has been accepted, that way I can cite it. Also, the “consistency initiative” is something unique to the US where a client has prior registrations that have been accepted. You can rely on the consistency initiative with respect to that client’s own applications that because prior goods/services descriptions were accepted, they should be accepted on future registrations.
- Lydia – Look to prior international filings to see if you can use similar goods/services descriptions, but understand that just because you got a specific description in the US doesn’t mean you can get it elsewhere. Sometimes you can get examples of acceptable descriptions. Note that some jurisdictions only allow you to file in a single class. Other times, you may have only filed in a single class for strategic reasons and you can’t move to another class. In those circumstances, you’ll need to file a new application. If I’m working on an application with a very technical description and I want to expand into certain countries, I may reach out to local counsel to see if they think it’ll be acceptable especially if it’s single class jurisdiction where the trademark office may consider it differently.
- MJ – The US and Philippines require marks be in use in the marketplace before registration issues. Lydia – Mexico and Argentina are requiring evidence of use before registration.
- MJ – To maintain registrations in the US you must demonstrate continued use. The reasons for refusal of a specimen include: specimen is digitally modified, mark in specimen doesn’t materially match the application, and mark in specimen fails to function as a trademark. This is one of the hardest things to explain to clients, especially foreign clients. You can avoid specimen refusals by providing a substitute specimen, but counsel clients that specimens need to be bona fide specimens and DO NOT use Photoshop. Examiners have special software to identify doctored specimens.
- MJ – Because applications can be refused and registrations can be canceled due to improper specimens, make sure to counsel clients about best practices of trademark use and requirements that they’ll need to meet before the USPTO.
- MJ – Particularly for apps filed on an intent to use basis, if your client has decided that particular goods/services are going to be introduced on different time frames, counsel your client about dividing the application so that specimens will be acceptable to the USPTO. Counseling foreign clients on this is especially challenging, particularly for unsophisticated foreign applicants. They really need a lot of counseling when it comes to US use requirements.
- Lydia – Use the Paris Convention if it’s a first to file application. If you think you may encounter an issue down the line, file in one jurisdiction, then file where you may have issues, and then you have that priority right. It’s a strategic tool you can use to acquire rights. With Madrid filings if you rely on the US application, you’ll have a narrower description of goods/services than if you file elsewhere. So perhaps file somewhere else first with a broader description of goods/services. Also, in the US you’ll have all the use requirements so if the mark is invalidated then you’ll have to transform the application in the various jurisdictions.
Speakers
Lydia Gobena
, Partner, Fross Zelnick
Lydia Gobena’s passion for creativity permeates her broad global practice with innovative strategies for acquiring, enforcing, and assigning international intellectual property rights. From counseling clients on international trademark, industrial design, copyright, and unfair competition issues to litigating international and multi country conflicts, Lydia gets results for her clients, including protection of nontraditional trademarks such as single colors and sound. Lydia has championed countless court and trademark office decisions for major brand owners acknowledging the fame of their trademarks in jurisdictions around the world, thereby preventing the registration and – in certain instances – use of infringing third-party trademarks. She also secured one of the first criminal convictions for trademark infringement in Chile. Recently described as a “key partner” in Chambers USA, Lydia has deep experience in obscure international jurisdictions, including conducting global trademark clearance projects with analysis and evaluation of search data and related risks. She investigates and negotiates issues relating to third-party rights, implements global filing strategies, and advises on domain name protection for ccTLDs (country code top level domains) and gTLDs. Her transactional work includes IP portfolio audits and due diligence for acquisitions and divestitures. Lydia’s diverse international clientele has included leading pharmaceutical and hotel companies, luxury goods companies, personal care companies, entertainment properties, beverage and sports brands, and a leading provider of engineering and architectural software.
M.J. Williams
, Partner, Wissing Miller
M.J. Williams is a partner at Wissing Miller LLP, a boutique intellectual property firm in New York City. She provides practical, strategic counsel on trademark matters to creatives and creative businesses, from start-ups to global corporations in nearly every industry, including beverage and hospitality, consumer and industrial goods, technology, supply chain logistics, fashion, education and culture, publishing, and travel. M.J. offers clients a soup to nuts practice – trademark selection, registration, portfolio management, licensing, enforcement, disputes, litigation, and acquisitions – fed by her holistic understanding of trademarks’ eventful lifetimes in the U.S. and abroad.