Likelihood of Confusion

Refused trademark registration because of “similarity of marks” or “likelihood of confusion”?

Trademark application refused registration for likelihood of confusion?

The purpose of trademarks is to differentiate one source of certain goods and services from another. Therefore, the goal of registered marks is to not be confusing with one another, and, if a registered mark (or application that pre-dates yours) is viewed by an examiner as confusing with your trademark application, you may get an objection based on “similarity of marks” or “likelihood of confusion”.

Is your mark application dead in the water? Not necessarily. There are a few techniques you can use to overcome the objection, and they all boil down to arguing the likelihood of  confusion factors or likelihood of confusion test, first enumerated in the Supreme Court decision of re E. I. du Pont de Nemours & Co. We’ll also give some strategies or arguments against likelihood of confusion:

  1. Similarity of the marks. Look at how closely the marks are in spelling, appearance, and pronunciation. If a logo, the design elements may or may not be similar. Strategies: Focus on the differences between the marks themselves, especially in regards to the first part of the mark, which has a greater weight.
  2. Relatedness of Goods and Services. Compare the listed goods and services. There may be confusion even if the goods and services are different, so long as they are sold near each other. Strategies: Argue the differences, that the goods and services are not related, and that they would not appear together in a retail environment. Failing this, you can drop some goods or services that overlap, and keep remaining products/services that are clearly different.
  3. Similar Channels of Trade. Perhaps the goods and services are related but would never appear together in channels of trade (the way the goods are sold to the consumer), for example, one is retail (Amazon, Walmart) and the other is sold direct to manufacturers or governments. Strategies: look at how your products will be sold and how the confusing mark’s products are sold – would they ever overlap, would they ever be presented to the consumer at the same time?
  4. How Careful are Consumers? If the purchase is a big one (car, baby gear, television), then consumers will do more research and pay more attention, and are less likely to be confused. Also, sophisticate buyers like corporations and governments are viewed as more careful. If the decision is a quick, impulse buy (like a $1 item at the grocery store) then the bar for confusion is lower, since the consumer will think about the purchase less. Strategies: if your product is more expensive or important to a consumer, the bar for confusion may be raised as consumers will be more aware. Argue the importance of your product in a consumer’s mind.
  5. Number and Nature of Similar Marks. This has to do with how many similar marks are already registered – the more, the less of a barrier to your additional mark getting registered. I had a mark involving the word “block” in the construction industry, and there were so many similar marks already registered that it was not difficult to add my client’s mark to the Register. Strategies: perform a TESS search on the most distinctive part of the mark, and see how many marks come up in that industry. The more, the better for your chances of registration. You may want to remove some of the most overlapping goods/services if you are having trouble getting your mark registered.

Disclaimer: This website does not constitute legal advice, and if you require advice for your trademark or other legal advice, please consult a lawyer specialized in trademarks.

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