USPTO refusals · Section 2(d)
Likelihood of confusion: why the USPTO refuses names that aren't identical
It is one of the most common reasons a trademark application is refused. The test comes down to two questions, and you can ask them yourself before you file.
By Bill, Business Growth Expert · Verified and checked against TMEP §1207, 15 Oct 2026
Short answer
The USPTO refuses a mark when consumers would likely think your goods or services come from the same source as those under an earlier registered or pending mark. Examiners mainly ask how similar the two marks are, and how related the goods or services are. A close match on both usually means refusal.
Which two questions decide most likelihood-of-confusion cases?
The law behind this refusal is Section 2(d) of the Trademark Act. Courts list 13 factors, but the USPTO's examining guide says two are central in nearly every case. Put them on two axes and you get a quick risk check.
How does the USPTO compare two trademarks?
Marks are compared as a whole, for appearance, sound, meaning and overall impression. Being similar in one of these can be enough. The pairs below are hypothetical.
- Sound-alike spellings: KWIKLY vs. QUICKLEE
- Same dominant word, extra wording added: LUMEN vs. LUMEN STUDIO
- Same meaning in another language: BLACK CAT vs. GATO NEGRO
- Word mark vs. a logo that says the same word: ORBIT vs. a planet logo reading "Orbit"
Adding a descriptive word or your company name to someone else's mark rarely avoids a refusal, because buyers tend to remember the distinctive part.
This is why every application we prepare through our trademark registration service starts with a Comprehensive Direct Conflict Search: it looks for phonetic matches and look-alike marks like the pairs above, plus descriptiveness and specimen problems, before anything is filed.
When are goods or services considered related?
They don't need to be identical or even in the same class. The question is whether buyers might reasonably expect both to come from one company. Examiners often show this with websites that sell both kinds of product under one brand, or with existing registrations that cover both.
Hypothetical: a coffee roaster and a café can conflict even though one sells goods (Class 30) and the other provides services (Class 43), because many cafés sell their own branded beans.
What counts is the wording in the application and the earlier registration, not how either business actually trades today.
What are the 13 du Pont factors?
They come from a 1973 court decision, In re E. I. du Pont de Nemours & Co. Only the factors with evidence behind them are weighed.
Show all 13 factors
- Similarity of the marks as a whole: appearance, sound, meaning, impression
- Similarity and nature of the goods or services
- Similarity of trade channels
- Conditions of sale: impulse buys versus careful, informed purchases
- Fame of the earlier mark
- Number and nature of similar marks in use for similar goods
- Nature and extent of any actual confusion
- How long both marks have been used together without confusion
- Variety of goods the earlier mark is used on
- Any dealings between the two owners, such as a consent agreement
- The applicant's right to exclude others from using the mark
- Whether potential confusion is minor or substantial
- Any other established fact relevant to the likely effect of use
What can I do about a likelihood-of-confusion refusal?
The refusal arrives in an Office Action. You generally have three months to respond, and can buy one three-month extension for $125. Common routes include:
- Arguing that the marks or the goods differ, with evidence
- Narrowing your description of goods or services
- Getting a consent or coexistence agreement from the earlier owner
- Checking whether the earlier mark is still in use; abandoned registrations can be challenged
These are legal arguments. Secure Mark USA is a filing service, not a law firm, so for a 2(d) refusal we recommend speaking to a licensed trademark attorney.
Common questions about 2(d) refusals
If the earlier mark is in a different class, am I safe?
Not necessarily. Classes are an administrative grouping; the question is whether buyers would connect the two businesses. Related goods in different classes can still conflict.
Does disclaiming a word avoid a likelihood-of-confusion refusal?
No. Disclaimed wording is still part of the mark when the examiner compares it with an earlier one.
What if the earlier mark is only a pending application?
An earlier-filed application can still block yours. The USPTO may suspend your application until the earlier one is registered or abandoned.
Can I answer a 2(d) refusal myself?
Applicants domiciled in the U.S. may respond on their own. Because the response is a legal argument, most people facing this refusal use a licensed trademark attorney.
Sources
- TMEP §1207: Refusal on basis of likelihood of confusion
- 15 U.S.C. §1052(d) (Trademark Act Section 2(d))
- USPTO fee schedule (response extension fee)
General information, not legal advice. The pairs above are invented to illustrate each point.
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