Trademark Office Action Success

Overcoming a Section 2(d) Refusal for WISEGLOW (WISEGLOW v. WISEENERGY)

ZYL Law Firm responded to a USPTO likelihood-of-confusion refusal by showing that a shared prefix is not enough: WISEGLOW and WISEENERGY differ in sound, connotation, and commercial impression, reinforced by a focused amendment to the identification of services.

Section 2(d) Refusal Serial No. 98914044 Reconsideration Requested
This case study is based on public USPTO records (U.S. Application Serial No. 98914044, mark WISEGLOW). Confidential strategy details are summarized.

Challenge

The applicant sought U.S. registration of WISEGLOW. The USPTO refused registration under Section 2(d) of the Trademark Act based on a likelihood of confusion with the registered mark WISEENERGY (U.S. Reg. No. 6805616), and separately required a clarified identification of services and the foreign registration certificate.

The examining attorney's concern turned on the shared leading term “WISE.” The response therefore had to demonstrate that, viewed in their entireties, the two marks create distinct commercial impressions and are not confusable simply because they begin with the same word.

2(d)Shared "WISE" prefix addressed
ServicesIdentification clarified and narrowed
ResultWithdrawal and publication requested

Strategy

  • Compared the marks in their entireties under the du Pont factors: WISEGLOW is a compact two-syllable mark (WISE-GLOW), while WISEENERGY is a longer four-syllable mark (WISE-EN-ER-GY), producing different length, rhythm, and phonetic structure.
  • Emphasized the difference in connotation and commercial impression — WISEGLOW evokes intelligent illumination or smart lighting, while WISEENERGY points to the energy field — so the shared prefix does not control the analysis.
  • Amended the identification of services to clarify and focus the applicant's actual offering, reducing any perceived relatedness to the cited registration.
  • Satisfied the related procedural requirements, including the foreign registration certificate, and requested reconsideration, withdrawal of the refusal, and approval for publication.

Result

The response presented a complete du Pont record showing that WISEGLOW and WISEENERGY are sufficiently different in sound, meaning, and overall commercial impression, supported by a clarified identification of services, and asked the USPTO to withdraw the Section 2(d) refusal and approve the application for publication.