Refused Over a Shared Word on Identical Goods: Your Earlier Registration, Crowded Field and Meaning Evidence That Worked

You are in this situation if your Section 2(d) refusal makes two findings: your mark contains the registered mark or shares its main word, and your goods or services are "legally identical" to the registrant's. "Legally identical" usually means one side's wording is broad enough to include the other's, so the examiner treats them as the same without any outside evidence.

Before you argue

With identical goods the bar for the marks drops: "When the goods or services are identical or virtually identical, the degree of similarity between the marks necessary to support a determination that confusion is likely declines" (TMEP 1207.01(b)). So the quicker routes come first. If the registrant will sign a consent agreement, that can end it: BODYROK PILATES filed one ("Applicant hereby submits an executed copy of the Consent Agreement between Applicant and the owner of the Cited Mark as Exhibit A.") along with narrowed services and was approved the next day. If you can live without the overlapping goods, you can delete them: BAND ROULETTE deleted its clothing class and was approved the next day. You can narrow broad wording so the registrant's goods fall outside it: APIVERA changed "Chemicals for use in agriculture" to "Chemicals for use in agriculture, namely apiculture" (beekeeping) against aquarium and pond chemicals, together with arguments about the marks, and was approved three days after its response.

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

Examiners decide these refusals by weighing 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). On identical goods the responses below did not fight factor 2: SLF said so outright (it "does not contest that the second du Pont factor weighs in favor of refusal") and ROLLERS BLEND did too. They worked on the marks and on how strong the shared word is. Each approved case won with argument and evidence alone: no consent, no change of ownership 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: Strategic Partners (the thirteenth factor)

The factor: if you already own a registration for the same or nearly the same mark and goods, and it has lived on the register next to the cited one, that is a fact the Board has weighed. The manual describes the leading case, In re Strategic Partners (Board, 2012), and what the examiner should ask: "(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." It adds: "The duration of coexistence is not dispositive as to whether a §2(d) refusal should issue" (TMEP 1207.01).

When it fits: you hold, or bought, an older registration for essentially your mark and the same goods.

What to file: your earlier registration, the cited registration's date, a side-by-side of the two identifications of goods, and how long the two have coexisted.

Each approved file below paired the earlier registration with an argument that the marks differ as wholes, so the file does not show which point persuaded the examiner.

In their words. BIG INSURANCE's response: "Applicant owns Registration No. 5672372 for the standard character mark BIGINSURANCE.COM, which has been registered on the Principal Register for over six years." The final refusal that answered TEAM CATS: "neither of the prior registrations fit within the parameters to overcome a Section 2(d) refusal because the registrations have not co-existed for a minimum of five years with the cited mark."

The pattern: the three approved responses relied on a registration for the same words or nearly the same words as the application (BIGINSURANCE.COM, KID'S COUNTRY, LUCYD) and also argued the marks as wholes. The refused one relied on a different mark (TEAM K9 against TEAM CATS), and the examiner measured the coexistence against five years. LUCYD ARMOR was approved with about two years of coexistence, so the files do not show a five-year line.

2. Crowded field: show the shared word is weak (du Pont factor 6)

The factor: a crowded field is the sixth du Pont factor at work. 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 adds that "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" the term is 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)). The idea: when buyers see the same word on many brands, they learn to tell the brands apart by the other words.

When it fits: the word you share is common in your field. With identical goods, other owners' registrations for the same goods are available to you.

What to file: registrations owned by other companies, each containing the shared word, for the same goods as the cited registration's, with copies and a table in the response.

In their words. HONEY DIP's response said "there are also at least 38 active live, third-party registrations (including the Cited Marks) owned by different parties that use the word 'DIP' or its close variations in connection with hair care and personal care products," and attached copies. The final refusal that answered SMILE LOFT: "It is noted that applicant does not provide third party registrations." The one that answered THE DREAM TEAM: "Of the third-party registrations applicant submitted, only one appears to be both active and based on use in commerce, which is Registration No. 7521588."

The pattern: the approved responses filed registrations for the same goods as the cited ones, in numbers from five (SLF) to at least 38 (HONEY DIP). The refused ones filed web pages, which the examiner discounted, or two registrations, one of which the examiner would not count.

3. The marks mean different things: dictionary and trade-meaning evidence (du Pont factor 1)

The factor: this is the first factor, the similarity of the marks in their entireties, including meaning. The manual: "Additions or deletions to marks may be sufficient to avoid a likelihood of confusion if: (1) the marks in their entireties convey significantly different commercial impressions; or (2) the matter common to the marks is not likely to be perceived by purchasers as distinguishing source because it is merely descriptive or diluted" (TMEP 1207.01(b)(iii)).

When it fits: the shared word has an ordinary meaning, or a meaning in your trade, and the other words change what each mark says as a whole.

What to file: a dictionary entry for each mark's meaning, not only for the shared word, and, where the word is a trade term, pages showing how the trade uses it. Tie the meaning to the goods.

In their words. DEAD ON's attachments defined DEAD ON ARRIVAL as "having died before getting to a hospital, emergency room, etc..", and DEAD ON as "exactly correct or accurate." The final refusal that answered SPRUCE JUICE: "regardless of the scope of protection which "SPRUCE" is afforded in this analysis, the wording "SPRUCE" is identical in the applied-for mark and the registered mark," and it called JUICE descriptive of the services.

The pattern: in the approved files the added words changed what the whole mark means (ARRIVAL, EAST COAST, TAMPA, GALLERY), and the response gave a reason tied to the goods; DEAD ON and ALCHEMY also attached definitions. In the refused files the shared word led both marks and the added word, as in SPRUCE JUICE, described the services. TAMPA ROLLERS was approved with no exhibits, on the same reasoning as its sister application ROLLERS BLEND.

Arguments that rarely carried a case alone

Different buyers and stores (the third du Pont factor, trade channels), careful buyers (the factor on conditions of sale), no actual confusion, and descriptions of how either company really sells all appear in refused files. These factors are judged on the written lists. The manual: "An applicant may not restrict the scope of its goods and/or the scope of the goods covered in the registration by extrinsic argument or evidence, for example, as to the quality or price of the goods" (TMEP 1207.01(a)(iii)).

OVERLOADED, video games, described the two actual games in its response ("Our commercial product OVERLOADED is a driving simulator set in the 1950s-1960s where cargo is physically stacked on the back of a vehicle"). The final refusal: "Applicant's identification is broad enough to cover shooter games, while the registrant's identification is broad enough to cover driving simulation games." The application was abandoned. BLVCK MERCH's point that there was no actual confusion met this answer: "Applicant's argument that there is no evidence of actual confusion is of little evidentiary value."

Thor Tech pairs answer an examiner who must prove two kinds of goods are related. When the lists overlap, that proof is not needed: "there may be a likelihood of confusion where an applicant identifies its goods or services so broadly that the identification encompasses the goods or services identified in the registration of a similar mark" (TMEP 1207.01(a)(iii)).

Other routes that apply to any Section 2(d) refusal, such as owning or 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 "Shared Dominant Wording" or "Mark Wholly Contained" for the marks and "Identical Goods/Services" or "Broad ID Encompasses Narrow" for the goods, then filter to cases won by argument alone. Each case opens the examiner's letter and the applicant's filed response, so you can read what was attached.

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