The Standard Between Your Mark and Registration
One of the most common and arguably significant barriers to trademark registration has to be the likelihood of confusion standard. Essentially, if your trademark is too similar to someone else’s mark such that it is likely to cause confusion in the marketplace as to who offers the goods or services in question, there is a likelihood of confusion. And it can prevent you from obtaining federal trademark registration.
When a trademark application is filed with the United States Patent and Trademark Office (USPTO), in approximately 3-4 months it is assigned to an Examiner who reviews the application for errors, omissions or other substantive issues that may prevent registration.
As a part of this process, the Examiner will review and compare the mark against active registrations and pending applications in the USPTO database only.
The USPTO does not consider external factors, such as company names, domain ownership or other “common law” uses (though these are important since they can otherwise impact your trademark use and ownership rights).
If the Examiner finds that the applied-for trademark is confusingly similar to a registered mark or prior pending trademark application, he or she will issue an Office Action refusing registration based on Section 2(d) of the Trademark Act. In determining whether a likelihood of confusion exists, the Examiner considers a number of factors, known as the DuPont factors – similarities in appearance, sound, connotation and commercial impression, and relatedness of the goods and/or services offered under each mark, among others.
The analysis of whether a likelihood of confusion may exist is not simply a side-by-side comparison of the marks or the goods. The standard is consumer confusion in the marketplace – whether the average consumer making a purchase would become confused as to the source of the goods or services based on similarities between the marks and other factors.
If the average consumer may be confused into thinking the goods or services offered in connection with the respective trademarks come from the same source, affiliated sources or have common sponsorship, then a likelihood of confusion exists.
If your trademark application is rejected on the basis of likelihood of confusion, you have six months from the date of the Office Action to dispute the Examiner’s findings and present arguments and evidence to the USPTO supporting your position and why your mark should be allowed registration.
These arguments should attempt to distinguish the marks themselves, and/or the goods and services covered in each application. Whether you can overcome the Office Action depends on the facts of each case and the Examiner.
The best way to avoid a likelihood of confusion refusal is to conduct a comprehensive trademark search prior to filing your trademark application. This will give you a broad understanding of any and all identical or similar marks in the USPTO database (and also external uses of the mark) that may affect your trademark registration process or rights to use the mark going forward.
For more information on likelihood of confusion, USPTO Office Action responses or other trademark refusals, please contact us to schedule a complimentary consultation with a Flat Fee trademark attorney.