Recent statistics from the U.S. Patent and Trademark Office (“USPTO”) for 2023 indicate an 85% affirmance rate of §2(d) refusals of trademark applications on appeal to the Trademark Trial and Appeal Board (“TTAB”). This in generally in line with historic rates.
A trademark application is reviewed by a USPTO Trademark Examining Attorney on a variety of grounds, but most notably on whether there is a conflict with a prior-registered mark. A §2(d) refusal – so named because of the applicable section of the Lanham Act – is a determination that the applied-for mark may not be registered because it “so resembles a mark [previously] registered” that it is “likely to cause confusion, or to cause mistake, or to deceive.” That decision, however, is based on many subjective factors, including the similarity of the marks in appearance, sound, connotation, and commercial impression, the similarity (or relatedness) of the goods or services under the marks, the similarity of the channels of trade, the strength of the prior-registered mark, and many others. If refused, a trademark applicant may appeal to the TTAB, but these most recent statistics suggest a 15% chance of reversing the §2(d) refusal.
Given the tremendous deference that the TTAB gives to the mostly-subjective opinion of an individual USPTO Examining Attorney in issuing a §2(d) refusal, trademark searching prior to filing a trademark application continues to be extremely valuable, often providing an experienced trademark attorney with valuable information about how best to tailor a trademark application to be more likely to avoid this type of refusal in the first place.