Have you received a trademark office action indicating that your trademark application has been rejected because of a likelihood of confusion with another trademark? In other words, has the trademark examining attorney found your mark to be “confusingly similar” to another mark? Under Section 2(d) of the Trademark Act, the Trademark Office is obligated to refuse registration of your trademark if it’s likely to cause confusion with a mark in an existing registration. Of course, what’s considered “confusingly similar” can be very subjective indeed. For example, if you want to register ABC for clothing and somebody already owns a federal registration for ABC for electric generators, the Trademark Office will probably not reject your application since clothing and electric generators aren’t products that would generally be perceived as being similar, related, or emanating from the same source. But, what about ABC for clothing and ABC for watches? In that instance, would there be a likelihood of confusion?
How is Likelihood of Confusion Determined?
Most likelihood of confusion cases are not cut and dried, and the question of whether one mark is confusing similar to another can become quite complex. If your trademark application has been rejected on the basis of likelihood of confusion, you can submit arguments and evidence to try to persuade the trademark examining attorney to withdraw the rejection. The Trademark Office and the Trademark Trial and Appeal Board (TTAB) use the following factors set forth in the case of In re E.I. du Pont de Nemours & Co. to determine whether one trademark is confusingly similar to another:
- The degree of similarity between the marks including visual appearance, sound, connotation, commercial impression, and meaning;
- Relatedness and nature of the goods or services;
- Similarities in established trade channels;
- The sophistication of the consumers;
- The fame of the prior trademark;
- The number and nature of similar marks in use in commerce on similar goods or in connection with similar services;
- Nature and extent of actual confusion;
- Length of concurrent use without evidence of actual confusion;
- Whether the trademark is used on a variety of goods or only used on a single product (family of marks or house mark);
- The market interface between the applicant and the owner of the prior mark;
- The extent to which the applicant has a right to exclude others from use of its mark;
- The extent of potential confusion (minor or substantial); and
- Any other established fact probative of the trademark’s use in commerce.
What are the Most Important Likelihood of Confusion Factors?
The weight given to each likelihood of confusion factor is different in each case, but the most important factors are almost always (1) the similarity of the marks, and (2) the relatedness and similarity of the goods and services.
Dealing with a Likelihood of Confusion Refusal
I’m US trademark attorney Morris Turek. If your trademark application has received a likelihood of confusion rejection and you would like a free, no-obligation consultation regarding your options, please feel free to give me a call at (314) 749-4059, shoot me an email at firstname.lastname@example.org, or send me a message through my contact form (below). I look forward to speaking with you.