Responding to a §2(d) Likelihood-of-Confusion Refusal
By Casey Scott McKay ·
A Section 2(d) refusal cites a conflicting registration and says your mark cannot coexist with it; this guide is the practitioner's walkthrough for proving that it can. It runs fourteen stages, from docketing the three-month clock the day the action issues through the final-refusal fork, and it carries one invented matter — Harrow & Dune, LLC and its DUNEWELL skincare application, refused over two cited registrations — through every stage with real dates, filings, and fees. It explains why only two DuPont factors decide most ex parte cases, why five of the arguments applicants most want to make are worthless in a response, and why the identification amendment is usually the argument rather than a supplement to it. It supplies model amendment language, model response headings, model consent-agreement recitals, a seven-branch decision tree for choosing an exit, a factor-scoring table, and a cost-and-timeline table for every route including cancellation and appeal. It covers the collateral attack you cannot make inside a response and the one you can make outside it, the suspension request that buys eighteen months, what a phone call to the examining attorney can and cannot accomplish, and how to keep your own response from becoming an adversary's best exhibit after B&B Hardware. The companion checklist is the one-screen-per-phase version; this is the reasoning behind it.
IP and Technology > Trademarks | Guide | Published 15 January 2026 - Updated 11 June 2026 | Casey Scott McKay - marksy.us
Summary. A §2(d) refusal cites a conflicting mark and says the two cannot coexist. This guide is the practitioner's walkthrough for proving they can — fourteen stages from docketing the three-month clock to the final-refusal fork, carried through one invented matter with real dates, filings, and fees. It explains why two DuPont factors decide almost every ex parte case, why the five arguments applicants most want to make are worthless in a response, and why the identification amendment is usually the argument rather than an accessory to it. Model amendment language, model response headings, model consent recitals, a seven-branch decision tree, a factor-scoring table, and a full cost-and-timeline table are included, along with the collateral attack you cannot make in a response and the one you can make outside it.
Keywords: section 2(d) refusal · likelihood of confusion · dupont factors · office action response · cited registration · similarity of the marks · relatedness of goods and services · identification amendment · consent agreement · coexistence agreement · third-party registration evidence · crowded field · trade channel restriction · petition to cancel · suspension under 37 cfr 2.67 · request for reconsideration · ex parte appeal · standard character claim · three-month response deadline · examiner's amendment
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