Interested in training for your team? Click here to learn more

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

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

This program is included with the Strafford CLE Pass. Click for more information.
This program is included with the Strafford All-Access Pass. Click for more information.

Conducted on Tuesday, July 9, 2024

Recorded event now available

or call 1-800-926-7926

This CLE course will guide trademark counsel in understanding how examining attorneys at the U.S. 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 so resembles an already registered mark that a consumer is likely to be confused as to the source of the products or services of the applicant. Determining the likelihood of confusion is made by applying the 13 factors outlined 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.

Before filing, trademark counsel should evaluate facts and make critical decisions to avoid refusal under Section 2(d). After an application is filed, if it is refused under Section 2(d), trademark counsel often have several options for overcoming such refusals. Frequently, trademark counsel mistakenly defaults 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 rejections under Section 2(d) of the Lanham Act.



  1. History, purpose, and fundamental principles of Section 2(d)
  2. The du Pont factors for determining the 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 the likelihood of confusion?
  • What best practices should counsel employ to avoid or overcome Section 2(d) refusals?


Gallagher, Patrick
Patrick J. Gallagher

Barnes & Thornburg

Mr. Gallagher has deep experience in trademark clearance, investigation, prosecution, as well as client counseling and...  |  Read More

Weseman, Draeke
Draeke H. Weseman

Of Counsel
Greenberg Traurig

Mr. Weseman helps brands by applying his knowledge of trademark law, enhanced by years of experience, to complex...  |  Read More

Access Anytime, Anywhere

Strafford will process CLE credit for one person on each recording. All formats include course handouts.

To find out which recorded format will provide the best CLE option, select your state:

CLE On-Demand Video