Refused as a Sound-Alike, Reversal or Translation: Dictionary Evidence, Translation Pages and Reversed Pairs That Won

You are in this situation if your Section 2(d) refusal says your mark is the registered mark in disguise: it sounds the same or is a misspelling, it uses the same words in reverse order, it is a translation of the registered word, or it uses different words for the same idea. The goods may be identical or only related; the fight is over whether the marks are really the same.

Before you argue

If the owner of the cited registration will sign a consent agreement, or the cited registration is about to lapse, that can end the refusal without any argument. BIO-KULT did not argue the sound at all: it told the examiner the cited registration was in its Section 8 grace period (the six months after the sixth-year deadline to prove the mark is in use), asked for a suspension, and was approved after the USPTO canceled that registration (it also reworded its goods). Narrowing the goods only helps if the examiner's evidence stops reaching what is left: BANDA LA FUGITIVA cut its services to live band performances, and the final refusal attached registrations covering those and sound recordings together.

If you decide to argue: three arguments that carried cases

Examiners decide these refusals by weighing the du Pont factors, a list of considerations from the 1973 du Pont decision. All three arguments below work on the first factor: the similarity of the marks in appearance, sound, connotation (meaning) and commercial impression (the overall idea a buyer takes away). Each approved case won with argument and evidence alone: no consent, no change of ownership, no change to the goods.

Whichever you choose, attach copies of the registrations, pages and dictionary entries you rely on. A list typed into the response does not count as evidence.

1. Dictionary evidence: each mark has its own meaning or sound (du Pont factor 1)

The factor: the manual closes off the simplest sound argument: "For purposes of the §2(d) analysis, there is no correct pronunciation of a mark because it is impossible to predict how the public will pronounce a particular mark; therefore, correct pronunciation cannot be relied on to avoid a likelihood of confusion" (TMEP 1207.01(b)(iv)). What the manual leaves open is meaning: "Even marks that are identical in sound and/or appearance may create sufficiently different commercial impressions when applied to the respective parties' goods or services so that there is no likelihood of confusion" (TMEP 1207.01(b)(v)). The approved responses below did not claim a pronunciation; they filed dictionary pages showing the words are real words with known sounds and meanings.

When it fits: the examiner says the marks are "phonetic equivalents," a misspelling, or phrases that "convey the same idea."

What to file: dictionary entries (with the pronunciation guide) for each real word in your mark and in the cited mark; and the registrant's own pages showing what its word means in its business.

In their words. DIGGY DONUTS's response: "Therefore, if the mark consists of a recognized word, there is likely a correct way to pronounce it." DYSPORTS quoted the registrant's own LinkedIn page: "Dyesport is a manufacturing company, making custom dye-sublimated sport clothing and uniforms". The final refusal that answered KNIGHT OF MYTHS: "However, slight differences in the sound of similar marks will not avoid a likelihood of confusion."

The pattern: each approved response gave the examiner a source for what the words mean or how they sound, taken from the dictionary or the registrant's own pages. KNIGHT OF MYTHS stated the differences without a source, and the examiner supplied the dictionary entries.

2. Several translations: the doctrine of foreign equivalents does not apply (du Pont factor 1)

The factor: the doctrine of foreign equivalents is the rule that a foreign word can be compared with its English translation. The manual calls it "a guideline, not an absolute rule" and says "The doctrine should be applied unless it is unlikely that the ordinary American purchaser would stop and translate the wording into its English equivalent" (TMEP 1207.01(b)(vi)(A)). On words with more than one meaning: "Thus, several translation dictionaries showing variations in the English meaning constitute evidence that the foreign word or term may not have a literal and direct translation, and the doctrine should not be applied" (TMEP 1207.01(b)(vi)). For more, see our guide to foreign equivalents.

When it fits: the examiner says your foreign-language mark means the same as the cited English mark, usually on one translation page.

What to file: translation pages from two or more sources that show different English meanings; a dictionary page showing a closer word for the English term, if there is one; and, as a second line, an argument that buyers would take the word as a brand and not translate it.

In their words. SENDERO's response: "The evidence reflects that 'sendero' may be translated as 'trail,' 'track,' 'country road,' or 'lane,' in addition to 'path.'" The final refusal that answered ADEUS: "the Portuguese language is a common, modern language spoken by an appreciable number of Americans capable of translating the term; and there is no evidence of any contrary meaning". The one that answered BANDA LA FUGITIVA: "While there is no evidence of record establishing that BANDA is a known genre or type of music," it said, FUGITIVA "would still be the dominant part of the applicant's mark."

The pattern: SENDERO and INCENDIO each put a source in front of the examiner showing more than one meaning or a closer word. ADEUS and BANDA LA FUGITIVA argued what buyers would do, with language statistics or a genre claim, and the final refusals pointed to the missing evidence.

3. Reversed pairs: the flip changes the commercial impression (du Pont factor 1)

The factor: the manual states both outcomes: "Where the primary difference between marks is the transposition of the elements that compose the marks, and where this transposition does not change the overall commercial impression, there may be a likelihood of confusion." And: "However, if the transposed mark creates a distinctly different commercial impression, then confusion is not likely" (TMEP 1207.01(b)(vii)). The question is whether the flip changes what the words say, as in candy cow and cow candy.

When it fits: the examiner says the marks are "reverse combinations" of the same words and relies on the shared words alone.

What to file: pairs of reversed marks that sit on the register under different owners, with status printouts, preferably in your field; dictionary entries showing how each word works in each order (noun, verb, adjective); and an account of the two different pictures the marks paint.

In their words. CANDY COW's response: "The change in the order of the two component words changes the grammatical significance of each word". TEXCRAFT's response said it had "identified at least four pairs of live, in-use registrations containing reverse combinations of TEX and a second element for textile goods in Class 24". The final refusal that answered MATHFIT: "Applicant's mark and registrant's mark use both MATH and FIT, and the presence of marks that use one word or the other is of little, if any, persuasive value."

The pattern: the three approved responses each filed reversed pairs, and TEXCRAFT and POINTBRAND filed them for the same industry. MATHFIT filed many registrations, but many held only one of the two words, which the final refusal gave little weight. HOMETRADE argued grammar with no source.

Arguments that rarely carried a case alone

Pronunciation alone is closed off by the manual (TMEP 1207.01(b)(iv), above). Different goods, buyers and channels (factor 2, factor 3 and the factor on buyer care) are judged on what the application and registration say: "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)). Attacking the registrant's use fails too, in HOMETRADE and ADEUS: "an applicant will not be heard on matters that constitute a collateral attack on the cited registration (e.g., a registrant's nonuse or ownership of the mark)" (TMEP 1207.01(d)(iv)).

FORSIGHT, refused over FORESIGHT where the examiner wrote "In the present case, the compared marks could clearly be pronounced the same," argued only that the services, buyers and channels differ, and never contested the marks.

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 then the argument hook for your disguise: "Variant Spelling / Phonetic" for sound-alikes and misspellings, "Reverse Element Combination" for reversed words, "Foreign Equivalents Doctrine" for translations, or "Meaning Equivalence" for different words with the same idea. 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.