Overcoming a US Trade Mark Refusal
Panoramix IP helped Riskwell overcome an initial US trade mark refusal and successfully progress its application to registration. After the USPTO raised a likelihood of confusion objection based on an earlier mark, our team made targeted amendments and submitted legal arguments that overcame the refusal, enabling Riskwell to secure trade mark protection for its brand in the United States.
The Client
Riskwell is a decision and risk management business that combines specialist software, methodology, training and consultancy to help organisations make better decisions and improve project and operational performance.
Founded in 2020, the business initially focused on addressing inefficiencies in project delivery within the North Sea oil and gas industry. Its offering has since developed into an industry-agnostic approach to decision and risk management, supporting organisations operating across sectors including infrastructure, technology, energy, construction, manufacturing and major transformation programmes.
Its solutions include Riskwell Protect™, a SaaS risk management platform designed to improve the visibility, analysis and mitigation of risk, and Riskwell Prime™, which enables organisations to link risks more closely with corporate and project objectives.
Riskwell became Panoramix IP’s first client for US trade mark filing work in 2021, when the company sought to secure trade mark protection for its brand in the United States. The client approached Panoramix IP seeking protection for the Riskwell brand in the United States, having previously been advised that the mark would not be registrable in the US.
The Challenge
The RISKWELL trade mark application faced an initial refusal from the United States Patent and Trademark Office (USPTO) due to a likelihood of confusion with an earlier trade mark.
A likelihood of confusion refusal can arise where the USPTO considers an applied-for mark to be too similar to an existing registered or pending mark in relation to the relevant goods or services.
Despite the previous advice the client had received, our US trade mark attorneys identified potential grounds for overcoming the objection and progressing the application.
The Solution
Our team carefully reviewed the USPTO examiner’s objections, the earlier cited mark and the scope of protection being sought for the Riskwell brand.
Rather than making substantial changes to the application, we identified a route forward involving limited amendments combined with carefully structured legal arguments.
This allowed us to directly address the likelihood of confusion concerns while retaining commercially useful protection for the Riskwell brand.
We prepared and submitted the response to the USPTO on the client’s behalf, setting out why the application should be permitted to proceed.
For businesses looking to protect their brands in the American market, Panoramix IP provides US trade mark registration services covering the process from initial filing through to responding to USPTO objections.
We can also file US trade marks directly for UK and EU businesses, enabling clients to manage their UK, European and US trade mark protection through one IP team.
The Outcome
Our amendments and arguments successfully overcame the objections raised by the USPTO.
The initial refusal was withdrawn, allowing the RISKWELL application to proceed and ultimately achieve US trade mark registration.
The case demonstrates that a USPTO trade mark refusal does not necessarily mean an application cannot succeed. Depending on the grounds for refusal, carefully considered amendments and legal arguments may provide a route towards registration.
If your business is considering expanding into the United States, our team can assist with US trade mark applications and provide advice where an application has encountered an objection or refusal.
Need Help With a US Trade Mark Application or Refusal?
Whether you are preparing to enter the US market or have received an objection from the USPTO, Panoramix IP can help you navigate the US trade mark registration process. With US-qualified expertise within our UK-based team, we can support UK and European businesses with new applications, USPTO refusals and wider international trade mark strategies. Find out more about our US trade mark services or get in touch with our team to discuss protecting your brand in the United States.
