Recently, the Eighth Circuit reaffirmed that a District Court is not bound by the decisions made by the Trademark Office. This holding has often lead to comments about the wisdom of addressing trademark disputes at the Trademark Office in the first instance. However, not all decisions from the Trademark Office are appealed to a District Court and the cost of a dispute before the Trademark Office is much less than a District Court action.

The cost is less because the Trademark Office does not determine the right to use a mark. In this sense, registration world is very different from the real world. And Focusing on four of the 13 likelihood of confusion factors can produce a successful result. Every situation is different, but attempting to resolve disputes first at the Trademark Office has its place in the overall enforcement straegy.