So you selected a trademark, possibly conducted a few searches on Google, and it looks like your trademark is n't being used by anyone. You submit a trademark application, and BANG, three or four months later, you get a rejection from the USPTO (i.e an Office Action) saying you trademark is confusingly similar to another trademark.
How can that happen? There a number of ways. Some of the most common reasons are as follows:
First, understand that, when looking for similar trademarks, the USPTO looks at trademarks registered with the USPTO. Such trademarks may not actually be in use and may not appear in Google search results. So if you just search in Google, old trademark registrations can still block your application. This is why you should search both on Google and the USPTO website using TESS for your trademark.
But what if you did? Note that the basic “New User” search on TESS won't necessarily pick up all possible spellings for a trademark, Trademark registrants often use quirky spelling for their trademarks such, for example, substituting “K” for “CK”, “Z” for “S” and “PH” for “F” (or vice versa). The resulting trademark may be phonetically similar or identical to yours, but won't necessarily be picked up on all searches. Also, your trademark could be embedded within a larger trademark.
Second, your trademark be similar to another trademark for what you take to be completely different goods or services. For example, you may use XYZ for real estate sales, but another company may use XYZ for investment services, including real estate investments. A trademark examiner could decide that investment companies whose portfolios include real estate could also be involved in real estate sales, or that consumers could confuse the two as being affiliated.
This is the doctrine of related goods. Where XYZ is a brand of diapers, there's no likelihood that consumers might assume XYZ investments is also selling diapers. Investment services featuring real estate versus real-estate sales is less clear. In real life, trademark examiners can go overboard in finding the most tenuous connections between various goods and services.
Third, sometimes examiners find trademarks that are really not particularly similar to be “confusingly similar”.
Generally speaking, the quality of trademark examination is, quite frankly, erratic and not always particularly thoughtful. No trademark application is immune to a thoughtless rejection
Can you overcome a likelihood of confusion rejection? There's never any way to be sure you can overcome a rejection. Sometimes an examiner will dig their heels in on a position and there's nothing you can do to get them to back off other than to appeal the rejection to the Trademark Trial and Appeals Board.
In any event, you can, if applicable, argue that the two trademarks have a different appearance, pronunciation or connotation,
If applicable, you can argue why the goods and services for your trademark and that of the registration blocking your application are not related, e.g. someone offering your types of goods and services would never offer the same goods and services offered by the owner of the blocking trademark registration.
If you have reason to believe that the owner of the blocking trademark registration no longer uses the trademark or has gone out of business, you can file a cancellation proceeding against the blocking registration, although this is a potentially complex and costly alternative. You can also file a cancellation proceeding against a blocking registration if think you can prove you have been using the trademark for a longer period of time.
Regardless of what path you choose to follow, however, give the Examiner a phone call before filing a written response. Maybe there is a way you can narrow the description of goods and services of your trademark application to satisfy the Examiner.
One other possibility is to reach a coexistence agreement with the owner of the blocking registration. For example, if you deal in low-cost goods, and are certain you will not deal in luxury goods at any time in the future, and the owner of the blocking registration only deals in luxury goods, the two of you could agree that you will coexist in the market.
Lastly, some trademark applicants simply abandon their trademark application if the rejection has at least a reasonable basis. It really depends on how valuable a particular trademark is to you, and it may well be cheaper to move on an pick another trademark. If you're really committed to using a particular trademark, however, you may wish to consider hiring an experienced trademark attorney.