Registering Trademarks: Overcoming Section 2(d) Likelihood of Confusion Refusals

Recording of a 90-minute premium CLE webinar with Q&A

Conducted on Thursday, December 6, 2018

Recorded event now available

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Program Materials

This CLE webinar will guide trademark counsel in understanding how examining attorneys at the United States Patent and Trademark Office and panels at the Trademark Trial and Appeal Board decide the issue of likelihood of confusion as it relates to trademark applications. The panel will outline approaches that work—and those that don’t work—for avoiding or overcoming refusals under Section 2(d) of the Lanham Act.


Under Section 2(d) of the Lanham Act, examining attorneys may refuse registration of a mark that, when used in connection with goods or services, so resembles an already registered mark that it is likely a consumer would be confused as to the source of the goods or services of the applicant. Determining likelihood of confusion is made by applying the 13 factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973). Some key factors are the similarity of the marks, the similarity of the goods or services, the similarity of established trade channels, the strength of the registered mark, the sophistication of purchasers, and the number and nature of similar marks in use on similar goods and services.

Prior to filing, trademark counsel can evaluate facts and make important decisions to avoid refusal under Section 2(d). And, after an application is filed, if it is refused under Section 2(d), trademark counsel often have several options for overcoming such refusals. However, oftentimes, trademark counsel mistakenly default only to arguing for coexistence, without considering the other options that might be available. For example, the registered mark may be abandoned or registered for an overbroad identification of goods or services. In that case, counsel may be able to petition for cancellation or partial cancellation of the mark and avoid arguing for coexistence altogether.

Listen as our authoritative panel examines the key du Pont factors, discusses strategies for avoiding refusal, and explores opportunities for responding to refusals under Section 2(d) of the Lanham Act.



  1. History, purpose and key principles of Section 2(d)
  2. The du Pont factors for determining likelihood of confusion
  3. Best practices for avoiding a Section 2(d) refusal
  4. Strategies for overcoming refusals under Section 2(d)
  5. Examples from recent TTAB decisions


The panel will review these and other relevant issues:

  • What strategies have trademark applicants used successfully to show the lack of confusion and obtain trademark protection despite Section 2(d) refusals?
  • How are the USPTO examining attorneys and the Board treating evidence for and against likelihood of confusion?
  • What best practices should counsel employ to avoid or overcome Section 2(d) refusals?


Gallagher, Patrick
Patrick J. Gallagher

Co-Chair, Trademark Prosecution Practice
Cozen O’Connor

Mr. Gallagher concentrates his practice on trademark and copyright issues, as well as other IP matters. He has...  |  Read More

Draeke H. Weseman
Draeke H. Weseman

Winthrop & Weinstine

Mr. Weseman creates consistent, successful outcomes for brands by reliably applying hard-earned knowledge of...  |  Read More

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