Likelihood of Confusion: How Related Are Goods Sold on the Same Website?
Nowadays, you can buy nearly any product online. Moreover, one-stop ecommerce giants such as Amazon.com want you to buy everything from them. Would the fact that you can buy nail clippers and pet food from an online retailer make those goods related or confusable? Does the fact that different types of products can be found on the same website make such goods related for purposes of determining likelihood of confusion? What makes goods related or unrelated when they all can be bought from the same site?
Need to prevail over a likelihood of confusion trademark Office Action? Contact US patent and trademark attorney Vic Lin at vlin@icaplaw.com to explore how we can help get your trademark registered.
Different Types of Products Found on the Same Website
USPTO trademark examining attorneys might reject your trademark application for certain goods on the grounds that your goods are similar to those of a registered trademark. In making this likelihood of confusion refusal, the examining attorney might point to the fact that your goods may be found on the same website that also sells goods of the cited trademark registration.
In countering this refusal, a deeper dive into the different categories of goods sold on such sites would be warranted. For example, the applicant’s goods might be under a completely different category of products than that of the registered goods.
Does the Website Sell Different Types of Goods Under Similar Marks?
Even if a website sells both the applicant’s goods and the registrant’s goods, you need to analyze the website evidence cited by the examining attorney in the Office Action. Do those websites show both types of goods being sold under similar marks?
For example, suppose the examining attorney finds examples of websites selling both the applicant’s goods and the registrant’s goods. Take a close look at the respective marks. What are the trademarks of the goods in the same category as that of the applicant? Compare those trademarks to the marks of the type of goods related to the registration? Are the marks similar?
If not, an argument can be made that such evidence – a website selling both applicant’s goods and registrant’s goods – would not be probative of the relatedness of such goods.
Consumer Classes and Purchasing Sophistication
Consider whether the products might be purchased by different classes of consumers or with higher purchaser sophistication. Each fact situation is unique. Certain products may be purchased by more sophisticated purchasers exercising a higher level of care.
Need to Overcome a Likelihood of Confusion Trademark Office Action?
Avoid cookie-cutter Office Action responses. To convince a USPTO trademark examining attorney, you will need specific arguments that show why the same website offering different types of goods would fail to show how your goods are related to those in a registered trademark.
Why pay for cheaper legal services that will only lead to another trademark rejection? Contact US patent and trademark attorney Vic Lin at vlin@icaplaw.com to request a flat rate quote for arguing against your likelihood of confusion rejection.
