Section 2(D) refusal of a trademark registration

[anikolop]

What is the name of your state? TX

I applied for a trademark registration for my computer software product and received a Section 2(d) initial refusal from the USPTO because my proposed mark resembles a registered mark so that it is likely to cause confusion. The existing mark is for computer hardware, not software. I spoke with the examining attorney and he hinted that he might change his mind if I can write a good response addressing the software/hardware comparison and that there might not be a likelihood of confusion because there are different products. Any suggestions on how I can structure this response?

 

[divgradcurl]

What is the name of your state? TX

I applied for a trademark registration for my computer software product and received a Section 2(d) initial refusal from the USPTO because my proposed mark resembles a registered mark so that it is likely to cause confusion. The existing mark is for computer hardware, not software. I spoke with the examining attorney and he hinted that he might change his mind if I can write a good response addressing the software/hardware comparison and that there might not be a likelihood of confusion because there are different products. Any suggestions on how I can structure this response?

Defintiely read the relevant sections of the Trademark Manual of Examining Procedure, available at www.uspto.gov. I don't know if there is any resource on the web that has sample responses to trademark office actions, but you could try Google. Also, if you are in a metropolitan area, or can get to one, see if you can find a public law library, then look up "McCarthy on Trademarks," it's kind of the bible on trademarks. There are also a few different treatises available on trademark examination, but, as I noted, you'll need a law library to find those.