Will I have a successful trademark application?  (“Likelihood of Confusion”)

So far, we have talked about different protections offered under intellectual property laws and the difference between goods and services.  Once you’re ready to apply for trademark protection, you will need to ensure your mark is in fact “registerable” with the United States Patent and Trademark Office.  So what makes a mark “registerable”?  There are a few factors to consider, including choosing a mark that’s not too similar to other marks in the same market.

The USPTO examines every application for compliance with federal law and rules.  Most commonly, trademark applications fail because there is a “likelihood of confusion” between the mark and a mark already registered or in a prior-filed pending application owned by another party.  The USPTO determines that a likelihood of confusion exists when both (1) the marks are similar, and (2) the goods and/or services of the parties are related such that consumers would mistakenly believe they come from the same source.  Similar marks or related goods/services by themselves are not enough to support a finding of a likelihood of confusion, unless a court has held that the mark is actually a famous mark.  

So what defines similarity?  To determine whether a likelihood of confusion exists, the marks are first examined for their similarities and differences.  Note that in order to find a likelihood of confusion, the marks do not have to be identical.  When marks sound alike when spoken, are visually similar, have the same meaning (even if in translation), and/or create the same general commercial impression in the consuming public’s mind, the marks may be considered confusingly similar.  Similarity in sound, appearance, and/or meaning may be sufficient to support a finding of likelihood of confusion, depending on the relatedness of the goods and/or services.  The following are the USPTO's examples of marks that would be considered similar:

Generally, two identical marks can co-exist, so long as the goods and services are not related.  The relatedness is determined by considering the commercial relationship between the goods and/or services identified in the application with those identified in the registration or earlier-filed application.  To find relatedness between goods and/or services, the goods and/or services do not have to be identical.  It is sufficient that they are related in such a manner that consumers are likely to assume (mistakenly) that they come from a common source.  The issue is not whether the actual goods and/or services are likely to be confused but, rather, whether a likelihood of confusion would exist as to the source of the goods and/or services.  The following are the USPTO's examples of related goods and/or services:

Please note that each trademark application is decided on its own facts and no simple mechanical test is used to determine whether a likelihood of confusion exists.  Therefore, before filing the non-refundable trademark application, it is important to speak to an experienced attorney to determine whether your proposed mark is likely to cause confusion to the consumers. 

Questions?  Give the Formation law Group a call at (424) 256-6614 or send us a line through info@formationlaw.com.