Likelihood of Confusion: How to Win the Not Similar Argument

What is the purpose of a trademark?

A trademark serves to indicate the source of goods or services (in this post, I’ll refer to both goods and services collectively as “products” for simplicity). A trademark may comprise words and/or logos used in connection with the sale of goods or services. In rare cases, a trademark may comprise a sound or three-dimensional product configuration. In order to be registered, a mark must avoid likelihood of confusion with any previously registered trademarks. 

Need to prevail over a likelihood of confusion refusal? Call Vic at (949) 223-9623 or email to explore how we can help you get your trademark registered.

Keep in mind that the offering of a product or service is key in making a word or graphic symbol a trademark. You cannot claim trademark rights by merely arguing that you coined a term if no products or services were ever provided.

To request a free initial consultation or a flat fee estimate for responding to your trademark refusal based on confusion, send me your trademark application details.

What does “confusion” mean in the trademark world?

Since the purpose of a trademark is to indicate the source of goods or services, confusion refers to the notion that consumers seeing one particular trademark on a product (or service) may think that the product originates from the owner of a similar trademark. In other words, there is a likelihood of confusion if consumers seeing Trademark B on a Product B from Company B are likely to think that Product B originates from Company A who owns Trademark A.

Therefore, confusion in the trademark world has a special meaning that refers to two marks being so similar that consumers are likely to be confused into thinking that the respective products originate from the same source [see TMEP § 1207.01].

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 . . . .”

[15 USC § 1052(d)]

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. 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 described in the application and registration(s).

[TMEP § 1207.01]

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).

Does likelihood of confusion require marks to be identical?

No, the standard is confusingly similar. Therefore, it’s possible for a new mark to be confusingly similar to a registered mark even if the new mark is not identical. Removing or changing certain portions of a registered mark will not guarantee that the new mark will be sufficiently distinguishable.

What if the same mark is used on different products?

The relatedness of the goods and/or services plays a key factor in determining likelihood of confusion. 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)]. Keep in mind that goods can be related to services (e.g., food products and restaurant services), and that the relatedness of the products is not limited to a single trademark class.

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.

Need to overcome a likelihood of confusion refusal?

Reach out to patent and trademark attorney Vic Lin by email or call (949) 223-9623 to see how we can help you overcome a likelihood of confusion rejection.

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