What is the purpose of a trademark?
A trademark serves to indicate the source of goods or services (for simplicity, I’ll refer to both goods and services collectively as “products”). A trademark may comprise words and/or logos used in connection with the sale of products. In rare cases, a trademark may comprise a sound or three-dimensional product configuration. In order to be registrable, a mark must avoid the likelihood of confusion with any previously registered trademarks.
Need to prevail over a likelihood of confusion refusal? Call US patent and trademark attorney Vic Lin at (949) 223-9623 or email vlin@icaplaw.com to explore how we can help you get your trademark registered.
To request a free initial consultation or a flat fee estimate for responding to your trademark refusal, send me your trademark application number.
What is likelihood of confusion?
Since the purpose of a trademark is to indicate the source of products, confusion refers to the notion that consumers seeing one particular trademark (Trademark A) on a product sold by one owner would think that the product originates from a different owner of a similar trademark (Trademark B). Confusion has to do with the source of goods or services. In most cases, the source is the company or person selling the products who is in charge of quality control. The source may or may not be the manufacturer of the goods.
Likelihood of confusion is not the same as actual confusion. Instead, there is a likelihood of confusion if consumers seeing Trademark A are likely to think that the product originates from the owner of Trademark B.
Therefore, likelihood of confusion in the trademark world has a special meaning. Two marks are confusingly similar when the similarity is such that consumers are likely to be confused into thinking that the respective products originate from the same source [see TMEP § 1207.01].
Can you register a slightly different mark that is not identical to a registered trademark?
The fact that your mark is not identical to a registered trademark might not be enough to make it registrable. The test is not whether the marks are identical.
Instead, the Trademark Office will look at whether the marks are confusingly similar. It is possible, therefore, to find a likelihood of confusion even when a mark is not identical to a registered trademark. Minor changes in the spelling or graphic design will not guarantee that a new mark will be sufficiently distinguishable.
What are the two most important factors in a likelihood of confusion test?
The two most important factors are the similarity of the marks and the relatedness of goods and services. Similarity involves the spelling, appearance and meaning of each mark.
Relatedness of the products can be tricky. The applied-for goods do not necessarily need to be the same as those in a trademark registration in order to find likelihood of confusion. The USPTO uses a balancing test to see if your applied-for mark should be rejected for being too similar to a registered trademark. This test may also be referred to as a sliding scale or spectrum.
What if the trademarks are similar, but the products are not?
Think of likelihood of confusion as a balancing of scales. If two trademarks are identical or highly similar, then the respective products need not be as similar in order to find likelihood of confusion. So if you apply for a mark that is identical to a registered trademark, the trademark examining attorney might reject your trademark application even when it appears that your product is different from those of the blocking registration.
In general, the more similar your mark is to a registered mark, the less similar the products have to be to support a finding of likelihood of confusion [see TMEP § 1207.01(a)].
In other words, if two marks are highly similar, a stronger argument can be made that there is no likelihood of confusion if the respective products are unrelated.
What if the products are similar, but the marks themselves are not?
Suppose your products are identical or substantially similar to those of a registered trademark. Could there be a likelihood of confusion when the marks themselves seem different? It depends.
When the respective products are highly similar, likelihood of confusion may be found even when the marks themselves appear different. In these situations, a variety of arguments might be available to show that the respective marks are substantially different to avoid a likelihood of confusion.
For example, are you dealing with a weak mark in a crowded field? Does your mark contain a dominant word different than the dominant portion of the registered trademark? If your mark contains multiple words, which word comes first? If you applied for a logo, does your mark contain highly distinctive design elements? Has the USPTO trademark examining attorney failed to provide sufficient evidence to show a likelihood of confusion?
An experienced trademark attorney might be able to develop strategies to prevail over a Section 2(d) refusal.
Keep in mind that goods can be related to services (e.g., food products and restaurant services). This also means that products in one class might be related to products in a different class.
Who would be confused?
Theoretically, likelihood of confusion is determined from the perspective of the consumer. The level of sophistication of purchasers and the care in exercising a purchasing decision are factors to be considered [see TMEP § 1207.01(d)(vii)]. The tendency of applicants who receive a likelihood of confusion rejection is to reason why they (the business owner) would not be confused, but business owners are not the standard. Consumers are.
What’s the difference between likelihood of confusion and actual confusion?
Actual confusion refers to instances where consumers actually thought that the source of a product from Company B belonged to Company A. Examples may include a purchaser of a product from Company B calling Company A to ask a question or return the product.
When examining a trademark application, the USPTO examining attorney is making a determination on the likelihood of confusion, and not whether actual confusion exists.
What is a Section 2(d) refusal to register?
If you filed a federal trademark application with the USPTO, the examining attorney might issue a letter called an Office Action setting forth reasons why registration is refused. If likelihood of confusion is the reason, then the Office Action will contain a refusal under Section 2(d) which states: “No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it—
(d) Consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive . . . .”
What are key factors in determining likelihood of confusion?
DuPont Factors
The DuPont factors are relevant considerations for making a determination on likelihood of confusion. As discussed above, the two most important factors are:
- The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.
- The relatedness of the goods or services as identified in the trademark filings.
The greater the similarity between marks, the less related the goods or services have to be in order to support a finding of likelihood of confusion [see TMEP § 1207.01(a)]. Therefore, if two marks are identical or virtually identical, the respective goods or services need not be as close to find a likelihood of confusion.
The following remaining factors should be considered if applicable and relevant:
- The similarity of established, likely-to-continue trade channels.
- The conditions under which and buyers to whom sales are made, i.e., “impulse” vs. careful, sophisticated purchasing [see TMEP §1207.01(d)(vii)].
- The number and nature of similar marks in use on similar goods [see TMEP §1207.01(d)(iii)].
- The existence of a valid consent agreement between the applicant and the owner of the previously registered mark [see TMEP §1207.01(d)(viii)].
- Fame of the prior mark
- Nature and extent of any actual confusion
- Concurrent use without evidence of actual confusion: length of time and conditions
Composite Marks
When a mark consists of both wording and a design (e.g., graphic image or logo), the verbal portion of the mark is typically the greater indicator of source. Therefore, the wording in a composite mark usually plays a more significant role in determining likelihood of confusion.
Third Party Use Relevant to Strength/Weakness of Mark
“The weaker an opposer’s mark, the closer an applicant’s mark can come without causing a likelihood of confusion and thereby invading what amounts to its comparatively narrow range of protection. Juice Generation, 2015 WL 4400033, at *3. Therefore, usage or registrations of similar marks by several third parties can show the weakness of a particular mark. Evidence of extensive use or registrations of similar marks by third parties can show that customers have been educated to distinguish between similar marks on the basis of minute distinctions. Jack Wolfskin Ausrustung fur Draussen GmbH & Co. KGaA v. New Millennium Sports, S.L.U., 797 F.3d 1363 (2015).
What are examples of confusingly similar marks?
The USPTO has provided examples of confusable trademarks based on sound, appearance, commercial impression and relatedness of goods and/or services here.
How can you minimize the risk of a rejection based on likelihood of confusion?
To reduce the risk of a likelihood of confusion rejection, have a knockout search performed of USPTO trademark filings for similar marks. This will give you a helpful indication of whether it makes sense to proceed with applying for your desired mark. If possible, you may want to pivot to a new mark if the knockout search uncovers one or more registrations or prior-pending applications for highly similar marks.
Keep in mind that selling a product or service is an important requirement. You cannot claim trademark rights by merely arguing that you coined a term if no products or services were ever provided.
Need to overcome a likelihood of confusion refusal?
Reach out to US patent and trademark attorney Vic Lin at vlin@icaplaw.com or call (949) 223-9623 to see how we can help you overcome a likelihood of confusion rejection. Better yet, see how we can help you file a trademark application that would avoid or minimize a confusion refusal.
