Rejection of a trademark application because it is similar to another party's prior registered trademark on identical or similar goods is the most frequent rejection scenario in practice. The following is a reconstruction of a typical case; the parties' information has been anonymized.
Case Reconstruction
The founder of a start-up restaurant brand settled on a brand name and, without conducting any prior search, directly commissioned the filing of trademark applications in Class 43 for restaurant services and Class 30 for related food products, while simultaneously printing storefront signage, menus, and packaging materials.
Several months later, a notice of rejection arrived: the cited mark was a two-character trademark previously registered in the same class, differing from the applied-for mark by only one character, sharing the same first character and an overall similar pronunciation, and the designated services fell within the same similar group as the applied-for items. The examiner found that coexistence of the two marks would likely cause the public to confuse the source of the services and rejected the application under Article 30 of the Trademark Law.
Where the Problem Lay
First, the applicant skipped the search and filed directly. A search conducted afterward showed that the registration of the cited mark had been published many years before the filing date, and any basic search would have found it.
Second, the degree of similarity was underestimated. The applied-for mark incorporated the entirety of the cited mark's core portion and merely added a weakly distinctive modifier—a classic case of overlap in the dominant portion, leaving virtually no room for argument on identical services.
Third, the sequence of filing and brand investment was inverted. Large-scale investment in materials was made before the prospect of obtaining rights was settled; after the rejection, everything had to be discarded, and renaming also entailed a complete overhaul of storefront signage, food-delivery platform listings, and the membership system—hidden losses far exceeding the official fees.
Common Features of This Type of Rejection
No search was conducted, or only an identical-match search was done; the applied-for mark fully incorporates the dominant portion of the prior trademark; the goods or services fall within the same similar group; and the cited mark is valid and stable. When all four conditions coincide, even the success rate of a review of rejection is very low.
The Correct Steps That Could Have Been Taken
Conduct a dominant-portion search at the naming stage and change the name upon finding a prior mark in the same class; run a three-dimensional similarity check (form, pronunciation, meaning) before filing; leave an examination window between filing in core classes and investing in materials; and, for a mark the applicant genuinely wants to pursue, assess the approval rate and prepare a review contingency plan before filing.
Takeaway
A notice of rejection is not the beginning of the risk—it is the confirmation of it. The cost of a search and the cost of rebuilding a brand have never been in the same order of magnitude.
If you need to handle the above matters, you can submit a trademark registration assessment request on MyTMBee, and a record-filed agent will follow through on the process.