Trademark Prosecution Success

Clearing a Translation Requirement and a 2(d) Issue for the LYKOS Mark

ZYL Law Firm responded to a USPTO provisional refusal of the non-English mark LYKOS by providing the required translation of the wording and narrowing the goods and services to the bicycle industry to overcome the cited prior-filed applications.

Translation Requirement Serial No. 79384950 Refusal Overcome
This case study is based on public USPTO records (U.S. Application Serial No. 79384950, mark LYKOS, a Madrid Protocol Section 66(a) application). Confidential strategy details are summarized.

Challenge

The applicant sought protection in the United States for the mark LYKOS through a Madrid Protocol application. The USPTO issued a provisional full refusal raising two key issues: a requirement to translate the non-English wording in the mark, and a Section 2(d) likelihood-of-confusion concern based on prior-filed applications — including the mark WOLF (Serial No. 88980148) and a second prior-filed application.

The translation issue was not cosmetic. “LYKOS” derives from the Greek word for “wolf,” which connected the translation requirement directly to the cited WOLF application. A translation statement had to be supplied without inviting the examining attorney to treat LYKOS and WOLF as confusingly equivalent.

TranslationNon-English wording statement supplied
2(d)Prior-filed WOLF application distinguished
ResultRequirements met; application advanced

Strategy

  • Provided the required translation / transliteration statement for the non-English wording, satisfying the USPTO requirement while keeping the record accurate to the mark's actual meaning.
  • Amended the identification of goods and services to narrow the scope specifically to the bicycle industry (bicycles and bicycle parts in Class 12 and bicycle-related commercial services in Class 35), with a side-by-side comparison table against the cited marks as an exhibit.
  • Distinguished LYKOS from the cited WOLF mark in appearance, sound, and overall commercial impression — including the cited mark's stylized full-moon design — so that a shared underlying meaning would not control the analysis.
  • Showed under TMEP §1207.01 that the respective goods and services were unrelated and would not be encountered by the same purchasers in circumstances giving rise to confusion.

Result

The translation requirement was satisfied and the Section 2(d) concern was overcome. By narrowing the goods and services to the bicycle industry and distinguishing the cited marks on the full du Pont record, ZYL Law Firm moved the LYKOS application forward while preserving a commercially meaningful scope of protection.