What does confusable mean?

To be registrable, a mark must not have a likelihood of confusion with any registered trademarks. In other words, an applied-for mark must not be “confusable” with any registrations owned by someone else. Pending applications filed by third parties with an earlier filing date might also cause your application to be suspended based on the potential for a likelihood of confusion rejection. The point of this post is not to delve into the likelihood of confusion analysis, but rather to provide helpful examples where the USPTO found certain marks to not be confusable with registered trademarks.

Keep in mind that confusable is not the same as actually confusing. In fact, the absence of actual confusion is hardly a factor in determining the likelihood of confusion. It would not be uncommon for your trademark application to get rejected over certain marks that cause you to think, “How in the world would anyone be confused over these marks?”

Confusable and similar are not the same thing. Your mark might be similar to your prior registrations which would not create a likelihood of confusion because the owner, or source of the goods/services, is the same.

What are confusable trademarks?

When you file a trademark application with the USPTO, a trademark examiner will be assigned to your application. USPTO trademark examiners are actually licensed attorneys so they are called trademark examining attorneys. When it comes to the USPTO, the term “examiner” is more frequently associated with patent examiners who typically are not attorneys.

The examining attorney will search for live trademark registrations that may be confusingly similar to your applied-for mark. The standard for likelihood of confusion may seem quite subjective and arbitrary, but the two primary factors are similarities in the marks themselves and in the respective goods or services. Similarities in the mark themselves comprise the appearance, sound and meaning of each mark. The more similar the marks, the less similar the goods or services have to be in order to present a likelihood of confusion. The more similar the goods/services, the less similar the marks have to be in order to create a likelihood of confusion.

If the examining attorney believes your mark may be confusable with one or more trademark registrations, you or your trademark attorney will receive a letter called an Office Action containing a Section 2(d) refusal.

Examples of not confusable trademarks

Here are examples where our firm has successfully persuaded the USPTO that our client’s trademarks were not confusable with cited trademark registrations:

  • OAK HEALTH CENTER for mental health and psychotherapy services not confusable with registrations for OAK CLINIC and OAK DERMATOLOGY
  • REBOW (design mark) for a variety of soaps, detergents and cleaning preparations not confusable with registration for REEBOW GEAR
  • JUICESTATION for a variety of electric vehicle battery charging services, related software and related electric goods not confusable with a number of registrations containing JUICE BAR with and without additional wording
  • ++ for programming, design and development of computer software not confusable with registration for M++
  • TENBLOX for educational services not confusable with KIDSPIRATION BASE TEN BLOCKS
  • GLASS for CRM computer software not confusable with registration for GLASTRAC

How to avoid a likelihood of confusion refusal, or reduce the risk of a Section 2(d) rejection

An effective way to avoid a likelihood of confusion refusal is to conduct a knockout search for any highly similar trademark filings at the USPTO. If any live trademark registrations or applications are found to be quite similar to your mark, you may want to pivot to a new mark. If certain trademark filings are borderline similar, perhaps consider carefully identifying your goods and services to avoid overlap.

Would the cited trademark registration owner agree that your mark is not confusable?

Perhaps, the owner of a blocking trademark registration might agree that your mark is not confusable with theirs. If so, consider reaching out to them to see if they would entertain a coexistence agreement, also known as a consent agreement. There are risks to making yourself known to another trademark owner, so consult with a trademark attorney before initiating contact with a registrant.

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Vic Lin

Startup Patent Attorney, Cofounder at Innovation Capital Law Group
We align ourselves with Davids fighting Goliaths. Our registered patent attorneys help innovators get IP that drives funding, growth and sales. Email or call us so we can get to work on your IP: (949) 223-9623 | vlin@icaplaw.com

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