Refusals for similarity to a cited trademark are the most numerous type of refusal and the area where review turnarounds are most concentrated. Below is an analysis of three typical successful scenarios for reference in similar cases. It should be noted that trademark similarity assessment is highly case-specific — others' successes cannot be copied directly, but the underlying argumentation logic has universal reference value.
Scenario One: Word Marks with Different First Characters and Distinct Meanings
Typical situation: the applied trademark is a three- or four-character Chinese mark; the cited trademark shares only the last two or three characters, while the first character differs and the overall meanings are clearly distinct.
Keys to success:
- Under the examination standard of "overall observation and comparison of essential parts," the first character of a Chinese word mark carries the greatest weight in verbal reference and visual recognition;
- The two marks as a whole point to different concepts, and the relevant public exercising ordinary attention can distinguish them;
- Supplemented by evidence of numerous coexisting registrations in the same class containing the same trailing characters, showing that examination practice accepts such coexistence.
Takeaway: do not argue word-mark similarity at the intuitive level of "the overall impression differs"; break it down into three technical layers — the first-character effect, phonetic differences, and semantic distinction.
Scenario Two: Goods in the Same Subclass but Not Similar in Market Reality
Typical situation: both parties' goods fall within the same similar subclass of the Classification of Similar Goods and Services, but their actual functions, purposes, sales channels, and consumer groups differ markedly.
Keys to success:
- Submit evidence of the actual sales contexts of both parties' products, proving that channels and consumer groups do not overlap;
- Argue that the subclass division in the Classification is a baseline reference rather than an absolute standard, and that actual market conditions are sufficient to overcome the subclass presumption;
- Combine evidence of the applied trademark's reputation to further reduce the likelihood of confusion.
Takeaway: disputing the similarity of goods is more easily overlooked than disputing the similarity of the marks, yet it is a highly cost-effective line of defense.
Scenario Three: The Applied Trademark Has Formed a Stable Market Order Through Use
Typical situation: the applied trademark is indeed somewhat similar to the cited mark, but it has been used extensively over a long period, forming a stable consumer base and market recognition.
Keys to success:
- Submit a chain of use evidence that is continuous in time and substantial in scale (sales data, advertising, channel coverage);
- Argue that the two marks have in fact coexisted in the marketplace for years without any actual confusion;
- Combine this with the points of difference between the signs to show that continued use will not cause confusion.
Takeaway: use evidence alone cannot reverse a finding of high similarity, but it can be the final weight that tips the scale, and works best in combination with arguments on the marks' differences.
Common Takeaways
All three successful scenarios share the same underlying logic: the similarity assessment proceeds through three progressive layers — "marks — goods — confusion" — and opening a gap at any layer can turn the case around. After receiving a similarity refusal, analyze all three layers one by one, concentrate firepower on the weakest link, and then supplement with coexistence evidence and use evidence; the success rate will improve significantly.
If you need to handle the matters above, you may submit a refusal review assessment application on MyTMBee, where a registered trademark agent will follow through on the case.