Refused Over a Shared Word and Related Goods: Crowded Field, Thor Tech Pairs and the Other Arguments That Worked

You are in this situation if your Section 2(d) refusal makes two findings: the word your mark shares with a registered mark is the part buyers remember, and your goods or services are "related" to the registrant's, usually backed by a few websites or third-party registrations the examiner attached.

Before you argue

If the owner of the cited registration will sign a consent agreement, that is often the shortest path, and a consent is itself one of the du Pont factors the examiner must weigh (BRECKENRIDGE filed one and was approved). If you can live without the overlapping goods, you can delete them: SIREN SONG TRAVEL dropped its whole lodging-booking class and was approved. Narrowing only works if the examiner's evidence no longer reaches what is left; FENIX PADEL CLUB and SCOOPS CHICKEN SALAD MARKET narrowed, and each final refusal (FENIX PADEL CLUB's, SCOOPS's) attached new websites tying the narrowed list back to the registrant's.

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). Each argument below works on a specific factor. 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. 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 treats other owners' registrations as evidence too: "Third-party registrations used to show inherent or conceptual weakness of a term or mark component" (TMEP 1207.01(d)(iii)). The idea: when buyers see the same word on many brands, they learn to tell those brands apart by the other words.

When it fits: the word you share is common in your field, or it has a meaning that suits the goods (OASIS for a treatment center).

What to file: registrations owned by other companies, each containing the shared word, for goods like the cited registration's; screenshots of those marks in use; and a dictionary entry where the word's meaning helps. The manual's test is what to aim at: "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 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)).

In their words. The final refusal that answered HIGH POINT WEALTH MANAGEMENT: "Evidence comprising only a small number of active use-based third-party registrations including the same or similar component is generally entitled to little weight in determining the strength of a mark." The one that answered AILERON STRATEGIES: "Applicant has presented no evidence that 'AILERON' is commonly used in connection with business services, creating a crowded field."

The pattern: the approved crowded-field responses showed more marks, for goods close to the cited ones. The refused ones showed a handful, or marks for other goods, or nothing.

2. Thor Tech pairs: show the two kinds of goods have separate owners (du Pont factor 2)

The factor: pairs go to the second du Pont factor, the relatedness of the goods. In Thor Tech the Board held: "Accordingly, we find that the similarity of the goods factor weighs against likelihood of confusion."

When it fits: the examiner says your goods and the registrant's come from the same companies, often by attaching a few registrations that cover both. The model is In re Thor Tech (2015), where the Trademark Trial and Appeal Board (the USPTO's appeals board) reversed a refusal of TERRAIN for towable trailers over TERRAIN for trucks: "Applicant’s evidence of dozens of third-party registrations for the same or very similar marks owned by different entities for vehicles and recreational vehicle trailers rebuts the relevant, two third-party registrations made of record by the Trademark Examining Attorney." If the register shows the same name split again and again between unrelated owners across your two categories, that is evidence buyers do not expect one company to sell both.

What to file: pairs of the same mark, where one company owns it for your kind of goods and a different company owns it for the registrant's kind. Lead with exact matches, and aim for more pairs than the examiner has registrations: in Thor Tech, dozens answered two.

In their words. The final refusal that answered ELOQUIA: "Prior decisions and actions of other trademark examining attorneys in applications for other marks have little evidentiary value and are not binding upon the USPTO or the Trademark Trial and Appeal Board." The one that answered WILD HORSE CREEK: "The marks were found to be similar because the first two words in the mark are identical, namely, "WILD HORSE"."

The pattern: the approved files showed pairs, from four exact ones (MACRO) to nearly fifty (CAFÉINA), and SETTLERS backed its five exact pairs with near-matches. WILD HORSE CREEK, with near-matches alone, did not hold up. And pairs are not a guarantee: ELOQUIA's exact pairs met the stock answer that other examiners' decisions do not bind this one.

3. Take the examiner's evidence apart (du Pont factor 2)

The factor: this is also the second factor, relatedness of the goods, attacked from the other side: the examiner has to prove it.

When it fits: the examiner's relatedness proof is a few websites. The manual puts the burden there: "The examining attorney must provide evidence showing that the goods and services are related to support a finding of likelihood of confusion" (TMEP 1207.01(a)(vi)).

What to file: go through the examiner's pages one at a time, with your own screenshots of the same sites. Check whether each site sells both kinds of goods under its own brand, or just resells other companies' products; whether the page is still live; and whether it is even in your field.

In their words. RICH JOURNEY's response: "none of the Internet evidence relied on in the Office Action are in the field of courier distribution services, logistics services, and starting a courier service business." The final refusal that answered THOROGOOD: "applicant attempts to impermissibly narrow the scope of registrant's identified goods by using extrinsic evidence of actual use."

The pattern: the approved responses attacked what the examiner's pages actually show. The refused ones argued about how the businesses really operate, which a comparison of the written lists leaves out, and gave the examiner room to add more pages.

Arguments that rarely carried a case alone

Different buyers and stores (the third du Pont factor, trade channels), careful customers (the factor on conditions of sale and buyer sophistication), no actual confusion, and descriptions of how either company really sells all appear in refused files, usually with no evidence. These factors are judged on the written lists too; the manual quotes the Federal Circuit: "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." And on the goods: "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)). Approved files made such points too (MACRO argued that disc golf and ball golf use different equipment and courses), but alongside one of the three arguments above.

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" and "Related in Some Manner," then filter to cases won by argument alone. Its Thor Tech pairs and crowded-field tools search the register for the evidence described above.

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