One of the most common reasons the United States Patent and Trademark Office (USPTO) refuses a trademark application is “likelihood of confusion” under Section 2(d) of the Lanham Act. In this article, we will learn more about USPTO Office Action Section 2(d) Refusal.

Introduction: The Two-Part Section 2(d) Likelihood of Confusion Test

The case In re E.I. du Pont de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973) established the DuPont factors, which guide examiners and courts in assessing whether two marks are confusingly similar. While there are multiple factors, the two most relevant in most cases are

1. Similarity of the marks, and
   
2. Relatedness of the goods/services.
   

This article focuses on the first factor—similarity of the marks and explains how the USPTO evaluates this similarity based on sight, sound, connotation, and overall commercial impression.

Similarity in Sight — How Marks Look

Visual similarity is often the first and most influential factor in determining the likelihood of confusion.
When two marks look alike, even if their spellings differ slightly, the USPTO may find them confusingly similar.

Example:

• SLIME (registered trademark for clothing owned by Nickelodeon) vs. SLIMEY (application for clothing) — the marks share nearly identical lettering and visual appearance. The USPTO issued a Section 2(d) refusal of the application for SLIMEY.  The similarity of the marks created a likelihood of consumer confusion regarding the source of the goods.

Key Point:
Visual resemblance often carries significant weight because consumers usually notice a mark’s overall appearance before its sound or meaning.

Similarity in Sound—How Marks Are Pronounced

Phonetic similarity is another major factor in Section 2(d) analysis.
Even when marks are spelled differently, if they sound alike when spoken, confusion may arise.

Examples:

• GREAT / GRATE / GR8—although spelled differently, they sound identical.
  
• XCEED vs. X-SEED (In re Viterra Inc., 671 F.3d 1358, 1367 (Fed. Cir. 2012))—the Federal Circuit held that minor differences in sound were insufficient to distinguish the marks.
  
• SEYCOS vs. SEIKO (Kabushiki Kaisha Hattori Tokeiten v. Scuotto, 228 USPQ 461 (TTAB 1985)) — the marks were found phonetically similar despite slight spelling variations.
  
• ISHINE vs. ICE SHINE (Centraz Indus. Inc. v. Spartan Chem. Co. Inc., 77 USPQ2d 1698, 1701 (TTAB 2006))—the TTAB reiterated that “there is no correct pronunciation of a trademark,” meaning any reasonable pronunciation that creates confusion is considered.
  

Key Point:
The USPTO does not require a “correct” pronunciation. If the average consumer might pronounce the marks similarly, confusion is likely.

Similarity in Connotation — What the Marks Mean

Connotation refers to the ideas or feelings a mark conveys. Even if marks differ visually or phonetically, their meanings can still make them confusingly similar or distinct enough to coexist.

Examples:

• I’M SMOKING HOT vs. SMOKIN’ HOT SHOW TIME (In re FabFitFun, Inc., 127 USPQ2d 1670 (TTAB 2018))—the TTAB held that there was no likelihood of confusion because I‘M SMOKING HOT described the result of using the applicant’s cosmetics, while SMOKIN’ HOT SHOW TIME evoked entertainment or performance.
  
• CROSS-OVER vs. CROSSOVER (In re Sears, Roebuck & Co., 2 USPQ2d 1312, 1314 (TTAB 1987))—the TTAB found that although the words looked and sounded similar, they conveyed different meanings. “CROSS-OVER” referred to the construction of bras, while CROSSOVER for sportswear was perceived as arbitrary or as referring to clothing that transitions between styles.
  

Key Points:
Even small wording changes can alter meaning and help distinguish two marks with similar sight or sound.  

 There is a subjective element to the impact of different connotations. 

Commercial Impression—The Overall Feel of the Mark

The commercial impression of a mark refers to the total impact it leaves on a consumer—how it looks, sounds, and feels as a whole.
It’s a holistic evaluation that considers how consumers would perceive the mark in the marketplace.

Examples:

• TRIPLEYE vs. 3RD EYE (Heil Co. v. Tripleye GmbH, Opp. No. 91277359, 2024 TTAB)—the TTAB held that even though the goods were identical, the marks did not share the same commercial impression. “TRIPLEYE” literally means “three eyes,” while “3RD EYE” evokes an inner or mystical perception.
  
• PACKARD TECHNOLOGIES vs. HEWLETT PACKARD (Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1266 (Fed. Cir. 2002))—the court noted that “PACKARD” was the dominant portion of both marks, which heightened the likelihood of confusion.
  
• DISTRICT OF FASHION vs. DOWNTOWNDC DISTRICT OF FASHION (DowntownDC Bus. Improvement Dist. v. Clarke, Opp. No. 91275100, 2024 TTAB)—the TTAB found that both marks created a similar overall impression because “DOWNTOWN DC” merely identified geographic origin, while “DISTRICT OF FASHION” remained the distinctive core.
  

Key Point:
Commercial impression is subjective and often depends on an examiner’s or judge’s interpretation. The USPTO evaluates the mark as a whole, not by dissecting its components. Check out all our types of trademark services offered.

Why Similarity Analysis Is So Complex

Trademark similarity analysis under Section 2(d) is rarely black and white.
No single factor controls the outcome. Instead, USPTO examiners and courts weigh multiple considerations: sight, sound, connotation, and overall impression to predict how ordinary consumers perceive the marks.

It’s also important to remember that marks are compared in their entirety. Dissecting or isolating individual elements can distort the true commercial impression.

Because of this nuance, understanding how your mark might be interpreted in comparison to others often requires experienced legal judgment.

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Takeaways and Transition

• The USPTO evaluates similarity holistically through how consumers see, hear, and understand a mark.
  
• Even small changes in spelling, meaning, or overall impression can make the difference between registration and refusal.
  
• Careful legal analysis helps applicants anticipate potential Section 2(d) refusals and craft stronger trademark applications.
  

Next in the series: We will explore the second part of the Section 2(d) test and how the USPTO evaluates the relatedness of goods and services.