Trademark Office Action Success

Resolving a Final Section 2(d) Refusal for the KLING AI Brand (KLING v. CLING)

ZYL Law Firm responded to a final USPTO refusal of the KLING mark by securing a consent agreement from the owner of the cited CLING registration and delimiting the goods and services to artificial-intelligence image and video generation.

Final Section 2(d) Refusal Serial No. 98952295 Refusal Resolved
This case study is based on public USPTO records (U.S. Application Serial No. 98952295, mark KLING). Confidential negotiation details and exhibits are summarized.

Challenge

The applicant sought U.S. registration of KLING in International Classes 9 and 42 for an artificial-intelligence platform used to generate images and video. During examination, the USPTO issued a final Office Action refusing registration under Section 2(d) of the Trademark Act, finding a likelihood of confusion with the cited registration CLING (U.S. Reg. No. 5847539, owned by Cling GmbH).

Because the refusal was final and the marks differed by only a single letter, a generic argument on mark dissimilarity alone was unlikely to carry the day. The response needed both a strong legal record under the du Pont factors and a concrete mechanism that the examining attorney could rely on to withdraw the refusal.

2(d)Final likelihood-of-confusion refusal
ConsentCoexistence agreement obtained
ResultRefusal resolved; application advanced

Strategy

  • Negotiated and obtained a formal consent and coexistence agreement (a Demarcation and Prior Rights Agreement) from Cling GmbH, the owner of the cited CLING mark, confirming that the parties did not expect confusion and agreeing on specific coexistence conditions.
  • Delimited the Class 9 and Class 42 goods and services to image and video generation by artificial intelligence, narrowing the field of use and reducing any practical overlap with the cited registration.
  • Compared the marks under the du Pont factors, emphasizing differences in appearance, sound, connotation, and overall commercial impression, and the distinct technological domains, consumer bases, and trade channels involved.
  • Relied on Federal Circuit authority holding that a credible consent agreement is entitled to substantial weight and that the USPTO should not substitute its own judgment for that of the real parties in interest absent good reason.

Result

With a signed consent agreement and a precisely delimited identification of goods and services, the record showed that the owners of the two marks had themselves concluded that confusion was unlikely. The Section 2(d) refusal was resolved and the KLING application advanced, protecting the applicant's U.S. brand for its AI image- and video-generation offering.