Deciphering Trademark Likelihood of Confusion Refusal
So, you’ve got a fantastic idea for a business or product, and you’re ready to trademark your brand. You’ve filled out the application, paid the fees, and now you’re waiting for that coveted registration from the United States Patent and Trademark Office (USPTO). But wait, what’s this? A trademark likelihood of confusion refusal? What does that even mean?
In this comprehensive guide, we’ll take you through the trademark application examination process and dive deep into the intricate world of trademark refusals based on likelihood of confusion. We’ll explain the key factors that come into play, like the similarity of marks, relatedness of goods or services, foreign word trademarks, transposition, and more. By the end, you’ll understand why conducting a comprehensive trademark search is the best way to avoid such refusals and secure your trademark registration.
The Trademark Application Examination Process
Before we get into the nitty-gritty of likelihood of confusion, let’s start with the basics. When you submit your trademark application, the USPTO assigns it a serial number and a trademark examining attorney. This attorney’s job is to review your application to ensure it meets all legal requirements and that your trademark is eligible for registration. So far, so good, right?
Now, part of this review involves the USPTO searching its vast database of registered and pending trademarks to see if your trademark conflicts with any of them. They want to make sure your trademark doesn’t cause any confusion in the marketplace. The examining attorney also checks whether your trademark makes sense within your specific industry, reviews your description of goods or services, and ensures you’ve followed the filing basis requirements.
If everything checks out, and there are no substantial issues (like conflicting trademarks), your application gets the green light for publication. But if the examining attorney finds any issues, they’ll send you an “office action” – a formal letter explaining why registration is being refused and possibly offering suggestions to fix the application. You’ll need to respond to this letter and address the problems by the given deadline. If your response resolves all the issues, your trademark will be approved for publication.
For a more detailed explanation of the application process, check out our blog posts about these timelines:
Is your mark already in use in at least 2 states and/or between the US & another country? The Use in Commerce Trademark post is for you.
If you’re not yet in business or only operating in 1 state, the Intent to Use Trademark post is what you’ll want to read.
Trademark Likelihood of Confusion: A Common Hurdle
One of the most common reasons for trademark refusal is the likelihood of confusion. This means that your trademark is likely to be confused with an already registered or pending trademark. In simpler terms, it boils down to this: if your trademark and the conflicting one are so similar in appearance, sound, or meaning and they’re used with related goods or services, confusion among consumers is likely to occur.
There’s no one-size-fits-all test for determining likelihood of confusion (“each case must be decided on its own facts”), but two key factors play a significant role:
- The similarity or dissimilarity of the marks: This considers their “appearance, sound, connotation, and commercial impression.” It’s not about whether the marks can be distinguished when placed side by side, but whether they’re similar enough to make people think they come from the same source.
- The relatedness of the goods or services: This looks at whether the products or services listed in your application are connected with those of the conflicting trademark. The USPTO doesn’t focus on whether consumers will confuse the actual goods or services; instead, it’s about whether they’d think they come from the same source.
Similarity of Marks
The first step in assessing likelihood of confusion is to look at the similarity or dissimilarity of the marks. Note that the marks don’t have to be identical – when they sound alike when spoken, appear visually similar, or create the same commercial impression in consumers’ minds, they can be considered confusingly similar.
The analysis considers how the marks are depicted in the application and registration, without considering other elements they might be used with, such as appearing with house marks or other facets, such as logos.
The Court of Appeals for the Federal Circuit emphasizes the importance of comparing marks in their entirety, rather than dissecting them into separate components. Even if two marks are not identical but are still similar in sight, sound, or meaning, they can be deemed confusingly similar, particularly if the goods or services they represent are identical or closely related.
Just because two marks are similar in one way – be it how they look, sound, or what they mean – doesn’t automatically mean there’s trouble brewing. Even if the goods they represent are pretty much the same, it’s the whole package that matters. But, sometimes, just one similarity factor is all it takes to ring the confusion alarm bells. So, it’s all about keeping an eye on the big picture when it comes to trademarks!
Sound Similarity
Sound similarity is a significant factor in determining whether marks are confusingly similar. It’s important to note that there’s no “correct” pronunciation of a mark, as it’s impossible to predict how the public will pronounce it. Thus, the correct pronunciation can’t be relied upon to avoid likelihood of confusion.
EXAMPLES: “XCEED” for agricultural seeds and “X-SEED” for the same goods are likely to be seen as sounding too similar and, therefore, confusing. “I-SHINE” and “ICE SHINE,” both used for floor finishing preparations were deemed confusingly similar.
Appearance Similarity
The appearance of marks matters as well. Even if marks have slight differences, they can still be confusingly similar in appearance. The “addition, deletion, or substitution of letters or words” doesn’t always prevent confusion.
EXAMPLES: “COMMCASH” and “COMMUNICASH” used for identical banking services are likely to cause confusion due to their high visual similarity. “MILTRON” and “MILLTRONICS” were also deemed to be similar in appearance.
Meaning Similarity
The meaning or connotation of a mark is yet another crucial factor in determining confusion. The focus is on what the average purchaser would perceive when looking at the marks in relation to the goods or services they represent.
EXAMPLE: “HOPNOTIC” and “HPNOTIQ” could be seen as conveying the same idea and are, therefore, considered confusingly similar.
However, even if marks are identical in sound and appearance, they may not be confusing if they imply different characteristics for different products.
EXAMPLE: “PLAYERS” for men’s underwear and “PLAYERS” for shoes were considered unlikely to cause confusion because they implied different characteristics for different products.
The Trademark Trial and Appeal Board (TTAB) said:
“PLAYERS” for shoes implies a fit, style, color and durability adapted to outdoor activities.
“PLAYERS” for men’s underwear implies something else, primarily indoors in nature.
Relatedness of Goods or Services
Even if two marks are dancing dangerously close to the ‘confusingly similar’ line, it doesn’t automatically mean we’ve got a likelihood of confusion on our hands. Nope, we need to dig deeper.
The real deal is whether the goods or services they’re connected to are actually related. We figure this out by examining the commercial connection between what’s listed in your application and what’s in the registration or an earlier-filed application. It’s all about those goods and services playing nicely together in the same sandbox.
If consumers might mistakenly believe they come from the same source, that’s a key factor in determining likelihood of confusion and a likely way to receive a trademark refusal.
For example, t-shirts and hats; banking services and mortgage lending services; an online retail clothing store selling t-shirts and a clothing line are all examples of related goods or services.
So, when filing a trademark, keep in mind that all these factors are critical in determining the likelihood of confusion. Any trademark search company worth their weight will consider ALL of this for every trademark search. When you’re shopping around for trademark services, do not be shy – ask them if (1) they conduct comprehensive trademark research and (2) what that means. If the answer does not include looking for marks that are similar in Sound, Appearance, or Meaning then save your money and move on.
Similarity of Trademarks – Other Issues
There are a myriad of other issues that are considered when the USPTO is determining likelihood of confusion. It’s not a simple one-to-one comparison – trademark to trademark, goods to goods, services to services. The USPTO also considers the following:
Trademarks that Contain Additional Matter
Additions or Deletions to Trademarks
Foreign Word Trademarks
Transposed Trademarks
Multiple Word Trademarks
Trademarks that Contain Additional Matter
Sometimes, trademarks include additional elements. These can be distinguishing features, descriptive terms, or even house marks. Determining whether there’s a likelihood of confusion requires careful consideration of the common elements of the marks and their overall commercial impression.
If the dominant portion of both marks is the same, then the marks may be confusingly similar, even if there are peripheral differences. For instance, “DETROIT ATHLETIC CO.” and “DETROIT ATHLETIC CLUB” may technically differ, but they still create a similar commercial impression.
EXAMPLES: When we take a step back and look at the big picture, considering only the non-dominant elements, those two marks – “GASPAR’S ALE” for beer and ale, and “JOSE GASPAR GOLD” for tequila – start to look strikingly similar.
Here’s another example: the applicant’s mark, “SPARKS BY SASSAFRAS” for clothing, and the registrant’s mark, “SPARKS” for footwear, could potentially stir up some confusion. Why? Well, those who already know about the registrant’s mark being used for their goods might assume that “sassafras” is some kind of special house mark that’s only used for certain “SPARKS” products.
Additions or Deletions to Trademarks
Adding or deleting elements from marks can sometimes be enough to avoid a likelihood of confusion. This is especially true if the overall commercial impressions created by the marks are significantly different or if the common elements don’t serve to distinguish the source, such as generic or descriptive terms.
EXAMPLES: “CATFISH BOBBERS” for fish and “BOBBER” for restaurant services are not likely to cause confusion because the word “BOBBER” has a different connotation when used in connection with their respective goods and services.
The trademark “GOLDEN CRUST” for flour and “ADOLPH’S GOLD’N CRUST” for coating and seasoning for food items might not be causing any confusion. Why? Well, both “GOLDEN CRUST” and “GOLD’N CRUST” are pretty suggestive when it comes to their respective products. Plus, the addition of “ADOLPH’S” is doing a good job at setting the two apart.
Foreign Word Trademarks
Foreign words in trademarks can pose an additional layer of complexity. Under the doctrine of foreign equivalents, a foreign word and its English equivalent can be considered confusingly similar if an appreciable segment of American consumers is familiar with the language.
The application of this doctrine depends on the significance of the foreign mark to relevant purchasers. If the translation is “literal and direct, and no contradictory evidence of shades of meaning or other relevant meanings exists” then the doctrine is generally applied by the examining attorney. However, it’s essential to consider whether the average American purchaser would translate the foreign wording into its English equivalent.
Now, here’s the scoop on foreign words: while we often translate modern foreign words into English, the doctrine of foreign equivalents isn’t set in stone. It’s more like a guideline we use when the everyday American shopper would naturally pause and turn foreign words into English. And by the way, that everyday American includes everyone, even those fluent in a non-English language who’d normally do the translation drill.
The foreign equivalents rule applies to words from regular, everyday languages. That means it covers most languages we commonly use, except for the rare, forgotten, or unusual ones. So, when it comes to applying this rule, the examining attorney needs to bring in the evidence showing that the foreign language in question is one of those common, modern languages.
The kind of proof needed can change depending on the specifics of each case. However, if possible, the examining attorney should bring in evidence about what percentage of folks in the United States speak that particular language. For instance, let’s say we’ve got census data showing that, after English, Spanish is the most spoken language in the U.S., with more than 12% of the population using it. This kind of info backs up the existing case law, which shows that the foreign equivalents rule is regularly used for trademarks in Spanish.
EXAMPLES: “BUENOS DIAS” for soap and “GOOD MORNING” and design for latherless shaving cream could be deemed confusingly similar under this doctrine
The trademark “LUPO” for men’s and boys’ underwear, and “WOLF and design” for various clothing items might stir up some confusion. Why? Well, one of the reasons is that “LUPO” is pretty clearly the foreign equivalent of the English word “wolf.”
The decision was made that “MARCHE NOIR” for jewelry and “BLACK MARKET MINERALS” for retail jewelry and mineral store services might just confuse folks. Why? Well, the evidence showed that “MARCHE NOIR” is simply the French equivalent of the English phrase “Black Market.”
Transposition: A Twist in the Tale
Sometimes, trademarks might differ only in the transposition of their elements. If this transposition doesn’t “change the overall commercial impression,” there might be a likelihood of confusion. However, if the transposed mark creates a distinctly different commercial impression, confusion is less likely.
EXAMPLES: “THE WINE SOCIETY OF AMERICA” for wine club membership services including providing printed materials and “AMERICAN WINE SOCIETY 1967” for newsletters, journals, and bulletins might be likely to cause confusion due to the similarities in their elements.
The ruling was that “RUST BUSTER” for rust-penetrating spray lubricant and “BUST RUST” for penetrating oil could cause some confusion.
But here’s the twist: if switching things around in the mark creates a whole different vibe in terms of commercial impression, then we’re probably not looking at confusion.
EXAMPLE: “BEST JEWELRY” for retail jewelry store services and “JEWELERS’ BEST” for bracelets were decided not likely to stir up any confusion.
Multiple Word Trademarks: Considering Dominant Elements
Compound word marks add an additional layer of complexity. While each mark must be considered as a whole, it’s crucial to determine whether a specific part of the mark is dominant in creating the commercial impression. Consumers are “more likely to perceive a fanciful or arbitrary term, rather than a descriptive or generic” one, as the source-indicating feature.
So, if two marks that represent related goods or services have the same or similar dominant features, and when you look at them as a whole, they give off a similar commercial vibe, then it’s probably going to lead to some confusion.
EXAMPLES: For THE DELTA CAFÉ, it was ruled that “DELTA,” not the disclaimed generic term “CAFE,” is the dominant portion of the mark THE DELTA CAFÉ
The decision was made that “CYNERGY” for medical lasers, used for treating the face and skin, and “SYNERGIE PEEL” for medical devices for microdermabrasion could likely confuse folks. Why? Well, it was noted that “SYNERGIE” is the main part of the cited mark, and just having “PEEL” wasn’t enough to set the marks apart.
Here’s the deal: if the shared element between two marks is, let’s say, kind of “weak” because it’s generic, descriptive, or super suggestive of the goods or services, it’s not very likely that consumers will get all tangled up unless there are other shared characteristics in the mix.
EXAMPLE: COBBLER’S OUTLET for shoes, and CALIFORNIA COBBLERS (in typed and stylized forms) for footwear and women’s shoes, were decided not likely to cause confusion
However, even if the public relies more on the nondescriptive portions of marks to distinguish them, it doesn’t mean that descriptive words play no role in creating confusion.
EXAMPLE: In a nutshell, the TTAB confirmed that the marks “DETROIT ATHLETIC CO.” and “DETROIT ATHLETIC CLUB” are pretty similar. They pointed out some sensible reasons why the terms “Co.” and “Club” don’t really do much to set these marks apart – they’re just business identifiers.
Avoiding Trademark Refusals
The best way to avoid a trademark refusal based on likelihood of confusion is to conduct a comprehensive trademark search before filing your application and starting your business. Investing your time and money into a name that’s available is much more sensible than having to rebrand and spend more money later. Experienced trademark professionals can make all the difference in securing your trademark registration.
Stay diligent, conduct comprehensive research, and remember that each trademark filing is unique. So, before you set your heart on a name, ensure it’s not already taken. Work with professionals who understand the nuances of trademark law and can guide you through the process seamlessly.
Conclusion
Trademark refusals based on likelihood of confusion can be a significant roadblock, but armed with the knowledge of the examination process and the factors involved, you can steer clear of these hurdles. Remember, conducting a comprehensive trademark search is your best bet to avoid any surprises down the road. So, tread carefully, and ensure your mark stands out without stepping on someone else’s toes.
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