Success Story: Overcoming Final Refusal to Safeguard a New Energy Vehicle Brand

Case Background & Core Challenges

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 in this case were: 1) The application was at the "Final Refusal" stage, where the legal threshold and difficulty of overcoming the refusal are significantly higher than during the initial examination. 2) The owner of the cited mark is a globally recognized industry giant with immense brand influence, which could create a preconceived bias during examination. 3) Both marks shared a common core identifying term, requiring a highly persuasive argument to differentiate them.

Core Legal Strategy & Argument Framework

To address this complex situation, ZYL Law Firm developed a multi-layered legal strategy to comprehensively and systematically respond to the examiner's refusal. The arguments centered on the following key points:

• Difference in Overall Commercial Impression of the Marks: The core of our strategy was to emphasize that the marks must be compared in their entireties. We argued that the applicant's mark is a composite mark consisting of two words with a stylized design, making its visual structure, phonetic rhythm, and overall meaning distinctly different from the cited mark, which is a single-syllable word. According to precedent, even if marks share a common element, the comparison must be based on the overall commercial impression given to the consumer, rather than dissecting the marks.
• Difference in the Nature of Goods and Services: Through a detailed analysis of the goods of both parties, we clearly demonstrated that the applicant's goods are focused on high-tech, cutting-edge products such as smart electric vehicles and autonomous vehicles. In contrast, the cited mark's registration covers "automobiles and structural parts thereof," a relatively traditional and broad definition. The two differ fundamentally in technological substance, target markets, and consumer demographics.
• High Degree of Consumer Care: The argument invoked TMEP §1207.01(d)(vii), pointing out that automobiles are expensive, durable goods. Consumers exercise a high degree of care when purchasing such items, conducting extensive research and comparison. This heightened attention and discernment significantly reduce the likelihood of confusion arising from partial similarity between marks.
• Evidence-Based Support from Market Realities: To make the legal arguments more persuasive, we strategically submitted substantial evidence of the applicant's brand usage and recognition in the actual marketplace. This included industry reports, delivery data, and financial news, proving that the applied-for mark had already established an independent commercial reputation in global and U.S. markets (especially among investors and specific consumer groups). Consumers were able to clearly associate the mark with the applicant, thereby factually diminishing the likelihood of confusion.

Case Management & Next Steps

While submitting a detailed request for reconsideration, we adopted a pragmatic dual-track management strategy. On one hand, we argued forcefully based on legal reasoning; on the other, we disclosed 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 should be suspended under TMEP §716.02(c) pending the outcome of the negotiations. This procedural request provided flexibility for resolving the matter and demonstrated our professional capability to pursue multiple avenues for dispute resolution.

Currently, the examiner has accepted our arguments, withdrawn the refusal, and the trademark application has successfully proceeded to the publication stage. If no opposition is filed during the publication period, the trademark will be registered, becoming a vital legal asset for the applicant in the U.S. market.

Case Commentary

This case is a classic example of how to respond to a final trademark refusal. Its professionalism is demonstrated in a defense strategy that was not limited to a single legal argument. Instead, it combined the likelihood of confusion analysis from trademark law (considering 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. This evidence-based, comprehensive approach, which integrates legal principles with commercial reality, is the correct path for handling complex intellectual property disputes.