Challenge
A subsidiary of a prominent Chinese new energy vehicle company (the “Applicant”) received a Final Office Action after filing a U.S. trademark application for its core brand. The refusal was based on Section 2(d) of the Trademark Act, with the examiner asserting a likelihood of confusion with a registered trademark owned by a well-known German automobile manufacturer.
The primary challenges were: 1) the application was at the final refusal stage, where the legal threshold for overcoming the refusal is significantly higher than during initial examination; 2) the owner of the cited mark is a globally recognized industry giant whose brand influence could create a preconceived bias; and 3) both marks shared a common core identifying term, requiring a highly persuasive argument to differentiate them.
Strategy
- Difference in overall commercial impression: emphasized that the marks must be compared in their entireties. The applicant's mark is a composite, stylized two-word mark whose visual structure, phonetic rhythm, and overall meaning differ distinctly from the single-syllable cited mark; even where marks share an element, the comparison must rest on the overall commercial impression rather than dissecting the marks.
- Difference in the nature of the goods: through item-by-item analysis, showed the applicant's goods focus on high-tech, cutting-edge products such as smart electric and autonomous vehicles, while the cited registration covers “automobiles and structural parts thereof” — a relatively traditional, broad definition — so the two differ fundamentally in technological substance, target markets, and consumer demographics.
- High degree of consumer care: invoked TMEP §1207.01(d)(vii), noting that automobiles are expensive, durable goods purchased only after extensive research and comparison; this heightened care significantly reduces any likelihood of confusion from partial similarity.
- Evidence-based support from market realities: strategically submitted substantial evidence of the applicant's brand usage and recognition — industry reports, delivery data, and financial news — proving the applied-for mark had established an independent commercial reputation in global and U.S. markets, so consumers associate the mark with the applicant and the theoretical likelihood of confusion is diminished in fact.
Case Management & Result
While submitting a detailed request for reconsideration, we adopted a pragmatic dual-track strategy: arguing forcefully on the legal merits, while disclosing to the examining attorney that the applicant was in settlement negotiations with the owner of the cited mark.
Accordingly, we formally requested that, if the examiner was not inclined to withdraw the refusal immediately, the application be suspended under TMEP §716.02(c) pending the outcome of the negotiations. This procedural request provided flexibility and demonstrated the ability to pursue multiple avenues for dispute resolution.
The examiner accepted our arguments, withdrew the refusal, and the trademark application proceeded to publication. If no opposition is filed during the publication period, the mark will register, becoming a vital legal asset for the applicant in the U.S. market.
Commentary
This is a classic example of how to respond to a final trademark refusal. The defense was not limited to a single legal argument; it combined the likelihood-of-confusion analysis from trademark law (the sight, sound, and meaning of the marks, the relatedness of the goods, and the degree of consumer care) with compelling evidence of market realities. By proving the applied-for mark's high recognition and independent identity in the real world, we effectively rebutted the theoretical possibility of confusion — an evidence-based, comprehensive approach that integrates legal principles with commercial reality.