Refused Over an Identical Mark and Identical Goods: The Few Arguments That Have Worked on Their Own

You are in this situation if your Section 2(d) refusal says your mark is the same as a registered mark, or differs only by a space, a period or the lettering, and that your goods or services are identical or "legally identical" (the examiner's phrase when the registration's broad wording takes in your narrower list).

The examiner's case is two marks and two lists side by side, so look first for a fact about the registration or about your own list. The three arguments below carried cases on their own, and each one fits a narrow set of facts.

Before you argue

Check the facts first. If you own the cited registration, or the registrant is a company you control, say so; one accepted proof is "a statement, supported by an affidavit or declaration under 37 C.F.R. §2.20 , that the applicant is the owner of the cited registration" (TMEP 812.01). WORLDS OF CURLS used the response form's ownership claim, "The applicant claims ownership of active prior U.S. Registration Number(s) 1286725.", and was approved the next day. Look up the cited registration's status, too. BACK DOOR TAVERN answered with one sentence, "Applicant respectfully requests suspension of the present application in view of the cited registration being in its grace period for renewal.", was suspended on January 7, 2026, and was approved on April 9, 2026, after the USPTO canceled the registration under Section 8 on March 20, 2026 (TMEP 716.02(e) provides for that pause).

A signed consent from the registrant is weighed, not automatic: "[T]here is no per se rule that a consent, whatever its terms, will always tip the balance to finding no likelihood of confusion" (TMEP 1207.01(d)(viii)). And if you can live without the overlapping goods, delete them: RUMINEXT opened its response with "The applicant requests to delete all the goods in Cl. 005." and was approved. Narrowing only works when nothing overlapping is left. TRICORE cut one word from its consulting list, and the final refusal answered that the "registrant's broad identification remains clearly encompassing of applicant's services."

If you decide to argue: three arguments that carried cases on their own

Examiners weigh the du Pont factors, a list of considerations from the 1973 du Pont decision (factor 1 compares the marks, factor 2 the goods, and so on). With identical marks, factor 1 is lost before you start, so each argument works on another factor. Each approved case below won with argument and evidence alone: no consent, no ownership claim and no change to the goods, unless noted.

Whichever you choose, attach copies of the registrations or pages you rely on (USPTO status printouts or certificates). A list typed into the response does not count as evidence.

1. Your own earlier registration of the same mark (du Pont factor 13, the Strategic Partners rule)

The factor: this rests on the thirteenth du Pont factor, "any other established fact probative of the effect of use." When an applicant already owns a registration that sits beside the cited one, the manual tells examiners to consider: "(1) whether the applicant’s prior registered mark is the same as the applied-for mark or is otherwise not meaningfully different; (2) whether the identifications of goods or services in the application and the applicant’s prior registration are identical or identical in relevant part; and (3) the length of time the applicant’s prior registration has co-existed with the registration being considered as the basis for the §2(d) refusal" (TMEP 1207.01, discussing In re Strategic Partners).

When it fits: you already own a registration for the same mark and the same services that is older than the cited registration or has stood beside it for years. It does not fight the identical-goods finding; it says the USPTO has already lived with this pairing.

What to file: registration records for your earlier registrations; a chart setting their services next to the application's; and the dates showing how long the cited registration has been beside yours.

In their words. The final refusal that answered LEDGER: "applicant’s prior registrations are not for identical services as the subject application, and have not co-existed for at least five years with the cited registration."

The pattern: the two approved cases each had an earlier registration for the same words and a services chart. The two refused ones had an earlier registration for different services (LEDGER, where the final refusal said so) or for a different mark (STAR).

2. Read "identical goods" against the exact words of both lists (du Pont factor 2)

The factor: this is the second factor, relatedness of the goods. The examiner's "legally identical" rests on a presumption about broad wording: "If the cited registration describes goods or services broadly, and there is no limitation as to their nature, type, channels of trade, or class of purchasers, it is presumed that the registration encompasses all goods or services of the type described, that they move in all normal channels of trade, and that they are available to all classes of purchasers" (TMEP 1207.01(a)(iii)). The presumption reaches goods "of the type described," not a registration that carries its own limit.

When it fits: the examiner treated one list as swallowing the other, but the registration's wording has a limit the letter skipped, such as a field of use or an amendment made during its examination.

What to file: a two-column chart quoting the registration's identification and yours; the registration's file history if the owner narrowed it; and, if the examiner attached web pages, a point-by-point answer to them.

In their words. ALPHARD's response said the amendments "reflect an acknowledgement by both the registrant and the USPTO that the Cited Marks do not identify vehicle-style golf carts." The final refusal that answered WEAR THE CROWN.: "Determining likelihood of confusion is based on the description of the goods and/or services stated in the application and registration at issue, not on extrinsic evidence of actual use."

The pattern: ALPHARD and MODPOD quoted the registration and the application, and the examiner's "identical" did not survive that comparison. The two refused responses described how the registrant really does business, and each final refusal went back to the written list. METEX mixed both, so treat this as an approach, not a formula.

3. Crowded field of the same letters (du Pont factor 6)

The factor: this is the sixth du Pont factor. The manual: "Evidence of third-party use falls under the sixth DuPont factor – the 'number and nature of similar marks in use on similar goods.'" It also treats registrations as evidence of a weak mark: "a large number of active third-party registrations including the same or similar term or mark component for the same or similar goods or services may be given some weight to show" that the term is relatively weak, and "The third-party marks must generally be as similar to the registered mark as the applied-for mark" (TMEP 1207.01(d)(iii)).

When it fits: the identical element is a short set of letters (the three approved cases are all initials) in a field where many owners use the same letters, usually in a stylized form.

What to file: registrations owned by other companies with the same letters for the same kind of goods, pages showing the marks in use, and a plain comparison of your lettering with the registrant's.

In their words. HC's response: "In a crowded field of similar marks, each member of the crowd is relatively weak in its ability to prevent use by others in the crowd." The final refusal that answered HYDRA: "Applicant has indicated that the term 'HYDRA' is weak with respect to the relevant goods but has not offered evidence substantiating the claim." The one that answered STAR: "the marks in those registrations are not as similar in format or commercial impression as registrant’s and applicant’s marks are to each other."

The pattern: the approved responses showed many other owners using the same letters for the same kind of goods, and compared the design or lettering. The refused ones had nothing, marks that were not like the cited one, or marks for other goods.

Arguments that rarely carried a case alone

Careful buyers, different trade channels, years without confusion and a different look appear in refused files. Channels are judged on the written lists: "The third DuPont factor—like the second factor—must be evaluated with an eye toward the channels specified in the application and registration, not those as they exist in the real world" (TMEP 1207.01(a)(iii)). PARANORMAL PASSPORT, the same name for guidebooks, conceded the overlap and argued branding and curated content. The final refusal: "Applicant has not explained how consumers would understand the separate parties' marks to refer to different sources when the parties are providing the same goods under the same mark." Abandoned May 19, 2026. STAR's claim of decades of coexistence without confusion drew this answer: "Uncorroborated statements of no known instances of actual confusion" carry little weight in examination. The approved files made such points too (UR, ALPHARD), but alongside one of the three arguments above.

Other routes that apply to any Section 2(d) refusal, such as canceling the cited registration, are covered in Fighting Back, Part 2.

Finding cases like yours

GleanMark's Office Action research (Professional and Max plans) lets you select a Section 2(d) refusal and the argument hooks "Identical Marks" and "Identical Goods/Services," then filter to cases won by argument alone. Each case opens the examiner's letter and the applicant's filed response.

This article describes public USPTO records. It is not legal advice; each refusal turns on its own marks, goods and evidence.