Has your trademark application been rejected because the trademark examining attorney found your mark to be “confusingly similar” to an existing mark? Under Section 2(d) of the Trademark Act, the Trademark Office is obligated to refuse registration of your trademark if it is likely to cause confusion with a mark in an existing registration. Of course, what is considered “confusingly similar” can be very subjective indeed. For example, if you want to register ABC for clothing and somebody already owns a federal registration for ABC for electric generators, the Trademark Office will likely not reject your application because clothing and electric generators are not products that would generally be perceived as being similar, related, or emanating from the same source. But, what about ABC for clothing and ABC for watches?
Most likelihood of confusion cases are not cut and dried, and the question of whether one mark is confusing similar to another can become quite complex. If your trademark application has been rejected on the basis of likelihood of confusion, you can appeal the decision to the Trademark Trial and Appeal Board (“TTAB”). The TTAB uses the following factors set forth in the case of In re E.I. du Pont de Nemours & Co. to determine whether one trademark is confusingly similar to another:
- The degree of similarity between the marks including visual appearance, sound, connotation, commercial impression, and meaning;
- Relatedness and nature of the goods or services;
- Similarities in established trade channels;
- The sophistication of the consumers;
- The fame of the prior trademark;
- The number and nature of similar marks in use in commerce on similar goods or in connection with similar services;
- Nature and extent of actual confusion;
- Length of concurrent use without evidence of actual confusion;
- Whether the trademark is used on a variety of goods or only used on a single product (family of marks or house mark);
- The market interface between the applicant and the owner of the prior mark;
- The extent to which the applicant has a right to exclude others from use of its mark;
- The extent of potential confusion (minor or substantial); and
- Any other established fact probative of the trademark’s use in commerce.
The weight given to each factor is different in each case, but the most important factors are almost always (1) the similarity of the marks and (2) the relatedness and similarity of the goods and services.
I’m trademark attorney Morris Turek. If your trademark application has been rejected on the basis that your mark is confusingly similar to an existing mark, please give me a call at (314) 749-4059 or shoot me an email at firstname.lastname@example.org for a free consultation regarding your options.