A Section 2(d) refusal: what it means, and whether you can answer it yourself
The examining attorney searched the register, found a mark already registered for related goods or services, and concluded that ordinary buyers could believe your product and theirs come from the same source. Registration is refused until you answer.
15 U.S.C. §1052(d) · TMEP §1207.01
What the refusal is really about
This is the most common substantive refusal there is, and it is not a finding that you copied anyone. It is a prediction about buyer confusion, made by one attorney reading two records.
The test is not whether the two marks look different side by side. It is whether the overall commercial impressions are similar enough that a buyer encountering them at different times, in the ordinary course, might connect them.
The goods matter as much as the words. Two identical marks can both register if the goods are far enough apart; two quite different marks can collide if the goods are the same.
The identification of goods you filed defines what the examining attorney is comparing. If it is broader than what you actually sell, you are being compared on goods you do not offer — which is why narrowing the identification often comes before arguing about the names at all.
What the examining attorney weighs
The test applied here: In re E.I. du Pont de Nemours & Co., 476 F.2d 1357 (CCPA 1973)
- similarity of the marks in appearance, sound, connotation and commercial impression
- relatedness of the goods or services
- similarity of trade channels
- conditions of purchase / sophistication of buyers
- strength of the cited mark and number of similar marks in use
The argument almost every applicant reaches for, which does not work
Applicants answering a 2(d) refusal overwhelmingly want to say some version of: I had never heard of that mark, I did not copy it, and I have never had a customer confuse us. None of those is the legal test, and stating them does not move the examining attorney. The question is what an ordinarily prudent buyer would think, not what you knew or intended. A related trap is the crowded-field argument — the claim that lots of marks share this element, so buyers already tell them apart. That is a legitimate argument, but only with actual registrations produced and cited by number. Asserted without evidence it is worth nothing, and you would be signing your name to a factual claim about third parties you have not verified. If you have not pulled those registrations, you are not yet entitled to make that argument.
What makes a response stronger
- Evidence of what you actually sell, at what price, to whom, through which channels — invoices, a storefront screenshot, a wholesale list
- A narrowed identification of goods that matches what you really offer, if the filed one is broader
- Anything showing the two products reach buyers in different ways, or that buyers in your category research before purchasing
- Real registration numbers, if you are going to argue that the shared element is common
Your deadline, and the number a lot of pages still get wrong
You have 3 months from the issue date printed on the office action — not from the day the email arrived, and not from the day you opened it. One extension of 3 more months is available for $125, and you have to request it before the original date passes (37 C.F.R. §2.62(a)(2)).
This changed on December 3, 2022. Before that the period was a flat six months, and a great deal of guidance still published online says so. If a page tells you that you have six months by right, it is describing the old rule.
USPTO: if a response is filed after the deadline the application will be abandoned and application fees will not be refunded. That is the whole reason to act on this now rather than in a month.
You are allowed to answer this yourself
If the applicant is domiciled in the United States or one of its territories, you may respond to an office action in your own name. You filed the application yourself; you may answer it yourself. Nothing about a refusal changes that.
If the applicant is domiciled anywhere else, the USPTO requires a US-licensed attorney to represent you. markanswer cannot help in that case and refuses the sale before taking any payment, rather than selling you a document you are not permitted to file.
When to hire a trademark attorney instead
If the refusal goes final, if you want to approach the cited registrant for a consent or coexistence agreement, or if the cited registrant opposes your mark after publication. Each of those is adversarial or contractual work, and a trademark attorney is the right answer.
Answering this one in your own name
markanswer drafts the response from your office action and your own answers about your business, organised the way the examining attorney reads it, with a plain statement under every argument of where it is weak and what evidence would help. You review it, correct anything that is not true of you, sign it and file it yourself through TEAS. $149, once. Read a complete one first — it is free.
The other four refusals
This page explains a category of USPTO refusal in general terms. It is not legal advice about your application, and markanswer is not a law firm and never represents anyone before the USPTO. Every citation on this page comes from the same committed authority list the drafting step works from.