What are similar trademarks?
Maybe it’s just me, but it sure seems like the USPTO has become more aggressive in refusing registration of trademarks. The reason has to do with registrations of similar marks. Known as likelihood of confusion or a Section 2(d) refusal, this is one of the most common reasons why trademark applications get rejected. If you get an Office Action with a Section 2(d) refusal, it can be quite challenging to win the argument. It means that the USPTO examining attorney thinks it is likely that consumers who encounter your mark will think the source of your goods or services is the same as the source of goods or services under a different trademark, or that there is some affiliation between the sources.
Likelihood of confusion is not the same as actual confusion. It is a theoretical exercise which seems to conflict with reality. You can argue that there is no confusion, and you will have the opportunity to do so if you get rejected. But wouldn’t you rather avoid making the argument altogether? Ultimately, you would save a lot of time and money if you can navigate around this trademark landmine. To do so, it helps to get a sense of how trademark examining attorneys might view your mark. Let’s talk about what you can do to avoid or minimize trademark confusion.
Why avoid trademark confusion in the first place?
In every rejected trademark application, you will have an opportunity to argue against the refusal. So what’s wrong with applying for the mark as broadly as possible and then dealing with the rejection if and when it comes?
First, it takes about 8-10 months to have your trademark application examined. Can you afford to wait almost a year to find out that your applied-for mark is too close to other trademarks?
Second, it costs money to argue against a likelihood of confusion refusal. Do you have the budget to pay an experienced trademark attorney to draft strong legal arguments?
Third, the USPTO trademark examiner (examining attorney) might not be convinced by your evidence and arguments. You may need to file a request for reconsideration and possibly a trademark appeal.
Lastly, even if you prevail against a confusingly similar rejection, a third party may still oppose your trademark application. While you cannot control the actions of others, you can try to stay out of their space to reduce the risk of an opposition.
With all of these potential additional costs and delays, wouldn’t it be better to have a trademark application done right from the get-go?
Use a trademark search to look for similar marks
Trademark searches are not expensive. Invest in a knockout search of the USPTO trademark database to find any highly similar marks that may block your new trademark application. By arming yourself with this knowledge upfront, you can pivot to a new mark if possible. If you have already been using a mark and do not want to transition to a new one, a search can enable your trademark attorney to craft your application to minimize overlap with any arguably similar marks.
Will a logo or graphic design help to avoid trademark confusion?
In comparing trademarks, the wording in a mark holds greater weight than the design. Nevertheless, it may be possible for a stylized design mark to avoid confusion with a word mark. This is a judgment call that would benefit from the counsel of an experienced trademark attorney. The more distinctive the stylization, the greater the difference.
Will adding a word make your trademark more registrable?
If your desired mark contains all the wording of a registered trademark, adding a word or two will probably not be enough to distinguish your mark. This is especially true if you’re thinking of adding a generic term that would need to be disclaimed.
Can you describe the goods or services to avoid confusion?
An experienced trademark attorney can help you craft an identification of goods and services that minimizes overlap with the goods and services of potentially similar marks. For example, a specific channel of trade may be specified. Exclusionary language can be used, for example, to carve out certain uses or industries.
Agreements better than arguments: Can’t we all get along?
Is it possible to prevail against a likelihood of confusion refusal without arguing? One strategy is to convince the registration owner to coexist by signing a consent agreement. Be careful. You may end up on the radar of an aggressive trademark owner who will not only refuse to coexist, but may end up opposing your application.
Before approaching the owner of the blocking trademark, have a gameplan to persuade them to agree that there is no confusion. Do you have leverage due to trademark priority? What would the registration owner gain by consenting to the use and registration of your mark?
Hope is not a strategy. So do not hope or expect other trademark owners to be charitable. You need to be prepared to articulate reasons why coexistence makes sense for them, not just for you.
Want to file a trademark application that avoids confusion?
Reach out to patent and trademark attorney Vic Lin by email or call (949) 223-9623 to see how we can help you apply for a trademark with less risk and greater chance of success.
