I recently finished reading The Divine Comedy, one of the most profound spiritual works in Western literature. In richly textured, musical, and almost cinematic language it traces the soul’s journey from a dark and bewildering wood, down through the Inferno, and finally upward toward the light.
Of course, Dante’s masterpiece bears no relation to the world of branding, nor should its spiritual depth be trivialized. Yet, as the founder and chief creative of River + Wolf, I couldn’t help but see a parallel with the trademarking process – a voyage that can feel, at times, like a descent into its own Inferno.
With patience, sound strategy, and knowledgeable guidance, however, that difficult passage can lead upward, ending beneath the starry sky of a successful registration.
But before that, the first step – creation.
The Adventure Begins
At River + Wolf, every naming project begins with deep immersion – we take the time to fully understand our client’s present realities and future dreams, their offerings, market, and mission. Only then do we embark on a wide-ranging exploration, in search of words, concepts, and metaphors we can re-purpose into names.
Our search stretches across many disciplines: astronomy, geology, architecture, mathematics, literature, mythology, etymology, history – even the headlines of the day. And when we can’t find what we need, we mix and meld morphemes, phonemes, and other linguistic elements to forge something new.
This stage of naming is exhilarating – expansive, inventive, and full of possibility. The next phase of the journey, however, is far less thrilling.
The Reckoning
Preliminary/Knock-Out Screening
Trademark screening takes place in two phases. The first is the preliminary (or knock-out) screening, designed to quickly eliminate names with obvious conflicts.
At this stage, we scan the United States Patent and Trademark Office (USPTO) – and, when needed, other global trademark offices – using Haloo, a proprietary AI screening technology – to ferret out potentially conflicting registrations. A desktop search for unregistered marks follows.
Five years ago, roughly half the names we screened made it through preliminary clearance. Today, it’s far fewer. Trademark filings have surged, registers are crowded, and even strong, original names are often too close to existing marks.
Because of this, it’s like entering the dark woods in Dante’s Inferno: at first, many paths look promising but they are quickly blocked by identical, or nearly identical, marks.
By search’s end, only a small group of candidates survive. But those marks are not yet out of the dark woods. Another phase of screening, known as a full or comprehensive search, lies ahead.
Full Clearance Search
Conducted by our attorney, this deeper level of screening goes well beyond a preliminary search. It examines not only identical or similar marks in trademark databases but also unregistered common-law uses, conceptual similarities, and related or expandable goods and services.
The comprehensive search also identifies foreign-language equivalents, online and domain-name use, logo or trade dress issues, and the enforcement history of existing mark owners.
The goal isn’t to just identify risks but to get a better grasp of their weight so our clients can move forward with confidence. Or, if the risk appears insurmountable, pivot to a less risky name.
The First Office Action
Once the name is filed, we wait six to eight months for the First Office Action – the PTO’s initial written response.
In the past, a thoroughly pre-screened filing generally led to minor procedural requests – classification tweaks, clarifications, routine housekeeping, etc. Today, that’s less often the case.
Increasingly, more and more applicants receive a Section 2(d) refusal based on an asserted, “likelihood of confusion” with an existing mark.
Section 2(d): Likelihood-of-Confusion Refusals
Historically, identical names could coexist in different industries. Two well-known examples are Delta Faucet and Delta Air Lines, ACE™ bandages and Ace Hardware. This principle still stands – but with added nuance.
Increasingly, if two marks share a hint of overlap – a prefix, rhythm, structure, even a conceptual similarity (e.g. hills and mountains, lions and tigers, skis and ice-skates), and appear in the same trademark class – the examiner may refuse the application despite differences in customers, sales channels, or real-world market behavior.
This isn’t because the name is weak, your attorney (assuming competence) overlooked something, or the attorneys at the PTO (known as examiners) are a nasty bunch who take perverse pleasure in opposing new filings. It’s the result of an overloaded system.
Volume Leads to Velocity
The USPTO and other registers weren’t built for the volume they must now manage. The past decade’s explosion of entrepreneurship, e-commerce, and global brand expansion has flooded the USPTO and other PTOs with new filings – tens of thousands more each year.
On top of that, bad-faith filings have proliferated, and unused marks take up space, creating even tighter naming real estate.
Examiners must now sift through this immense backlog at top speed or fall further behind in their workload. When the field is crowded, the safer choice is to issue a refusal rather than an approval. It’s frustrating. It feels unfair. But unfortunately, it’s the modern trademark landscape.
Legal Torch Required
A Section 2 (d) refusal marks the instant when the hope for an easy way out of the dark woods – a clean ascent up the trademarking hill – collapses. What remains is a descent into the Inferno proper, which, in Dante’s masterpiece, is an acoustically violent, starless realm where souls are embedded in a frozen lake. A place of iron walls glowing from inner fires, of towers reddened with flames, of ramparts, moats, and every manner of grotesque being.
But Dante is not abandoned here. A guide appears – the Roman poet, Virgil – who, with torch in hand, leads him step by step through the unbearable hellscape.
In trademark matters, your attorney is your torchbearer.
So do not despair. A Section 2(d) refusal is not the end of the journey. With strong legal reasoning, backed with solid evidence, refusals can potentially be overcome.
Both Fruit But Apples and Oranges
Here is a fictional example.
Imagine you file ALAVER for wealth management, and the examiner cites ALARIA for apartment leasing. Same ALA- prefix; same trademark class (Class 36), but different universes. ALAVER speaks to investors making long-horizon decisions. ALARIA serves renters seeking homes.
Still, an overwhelmed, overworked PTO examiner flags ALARIA as a “likelihood of confusion” conflict. Seeing the ruling, your blood boils… but breathe. All is not lost.
Market Reality Matters
Beyond demonstrating differences in appearance, sound, commercial impression, and trade channels, attorneys have another tool at their disposal: third-party coexistence evidence.
If, as in our fictitious example, many ALA- formative marks coexist in the same class without confusing consumers, it suggests buyers are processing the whole mark not just the first few letters.
The TTAB (Trademark Trial and Appeal Board) has reversed Section 2(d) refusals where widespread third-party use of a prefix or term, especially when supported with other legal criteria, demonstrates consumers can differentiate between the goods and services.
Proof Is in the Pudding
But attorneys can’t merely assert shared language – they must prove it through:
- third-party registrations
- real marketplace use
- screenshots
- long-term coexistence patterns
When supported by such evidence, along with well-argued differences in the mark’s appearance, sound, commercial impression, trade channels, and so on, a refusal can potentially shift into an approval.
Broader Isn’t Always Bad
At this stage of the trademarking journey, attorneys may choose to strengthen their argument by narrowing the original description of the mark’s goods/services – raising a commonly asked question: why not narrow the descriptions right from the start?
The answer is simple: because a broader filing preserves runway. It claims space first, narrows later if needed. Narrow early, and you reduce future protection.
Still, when early screening reveals that a narrower scope may help avoid receiving a Section 2 (d) refusal at the First Office Action, filing more narrowly can be a smart move. Trademark strategy is never one-size-fits-all.
Be Strategic. Be Patient.
Dante’s Inferno is unforgiving terrain – fire above, ice below, mythic forces at every turn – but it leads upward, not down. Modern trademark review is no different – and with your attorney’s help, navigable and often winnable.
So, even if after careful vetting, you receive a Section 2(d) refusal, remember:
- a refusal does not mean your name is weak
- it does not mean your agency has misstepped
- it does not mean your attorney erred
- it doesn’t reflect a PTO examiner’s malice toward new marks
It simply means the register is terribly crowded and speed has replaced nuanced assessment. And remember, the examiner’s first response isn’t necessarily their final one. With evidence, strategy, and persistence, strong marks are still secured. But today, more often than not, they are earned – not given.
At River + Wolf, we develop names worth earning: resilient, memorable, powerful enough to withstand the journey. And as Virgil walked beside Dante, the team at River + Wolf will walk beside you – torch in hand – until you emerge beneath the starry sky of a successful trademark registration.
