Case studies · Case study 04 · Trademarks · USPTO
A brand built on the word "watt": answering a USPTO likelihood-of-confusion refusal without a lawyer on retainer.
A small consumer-electronics brand selling Bluetooth speakers and wireless chargers on Amazon and its own site had filed its stylized MULTIWATTS logo with the USPTO. The examining attorney refused it: an old registration for MULTI-WATT, covering incandescent light bulbs, was deemed confusingly similar. The owner, based outside the United States, needed a response that could stand on its own.
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Engagement sheet
Sector
Consumer electronics, direct-to-consumer and marketplace sales
Size
Small brand, foreign-domiciled applicant, intent-to-use filing
Engagement
Technical and branding support to the owner for the response to a non-final office action
Office
United States Patent and Trademark Office, Trademark Examining Division
Deliverables
Structured response with argument and evidence, exhibit set, mark description, disclaimer wording, fallback strategy
Format
Fixed fee; the owner signed and filed the response in their own name
Context
The word "watt" is about as primitive a concept as a brand can be built on: a unit of power, used by everyone who sells anything electrical. The owner had nonetheless invested in a complete identity around it: a yellow square, a black plug with a lightning bolt, a two-tone wordmark. The products were already on the market with that look.
Problem
The refusal cited a decades-old standard-character registration for MULTI-WATT covering incandescent light bulbs. On paper the marks are almost identical and both sit in the electrical field. The office action also raised two formal points: a foreign applicant must appoint U.S. counsel, and the drawing needed a description and a disclaimer. Every point had to be answered in a single, coherent filing.
What I did
- Reframed the comparison: not word against word, but a logo mark with a strong visual identity against a plain word registration. In the market, consumers meet the applicant's mark as a complete branded image, never as a bare term.
- Turned the weakness into the argument: "multi" and "watt" are descriptive terms shared across the sector, so the cited registration's scope is narrow and small differences in presentation carry real weight. The mark had conceptually moved beyond the unit of measurement it is built on.
- Documented the distance between the goods: portable speakers and fast wireless chargers at consumer prices, sold online with full visual branding, against static lighting products from a registrant with no visible online presence.
- Pre-empted the examiner's reading of the design (it is a charging icon, not a light bulb), drafted the mark description and a disclaimer of the wording apart from the mark as shown.
- Assembled four exhibits showing the mark in actual use: website, packaging front and unfolded, marketplace listings, shipping carton.
- Built a fallback into the filing: deferral of the counsel requirement until the substantive refusal was resolved, and a request for the Supplemental Register if the Principal Register was denied.
Result
A complete, self-contained response filed about two months before the deadline, with every refusal and requirement addressed and a documented fallback route. The owner knew exactly what protection they were asking for: the logo as shown, not the words.
Outcome: the examining attorney accepted the arguments and withdrew the refusal. The mark proceeded to registration, without having to fall back on the Supplemental Register.
What I would do differently
- Choose the name before the packaging. A brand built on a descriptive word ends up protected only as a logo, because the words themselves must be disclaimed. Two hours of clearance before investing in artwork would have avoided the whole exchange.
- Budget U.S. counsel from the start for a foreign applicant. The requirement can be deferred, not avoided; deferring it is a tactic, not a plan.
- Write the Supplemental Register fallback into the first response, as was done here. It was not needed in the end, but it costs nothing and turns a refusal into a choice.
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