Likelihood of Confusion is a Common Issue for Trademark Application Refusals, Oppositions and Cancellations, and Infringement Suits
Likelihood of confusion is one of the most common grounds for a USPTO trademark refusal and trademark oppositions or trademark cancellations.
You’ve seen the ads for FREE trademark searches. They don’t seem to be working!
The problem is that searching for ‘ likelihood of confusion’ does not work well with a mechanical search or a direct hit search. This isn’t like an internet search where you are trying to find what other people are reading or find a page where key words are repeated a lot of times. There are a lot more steps and often the biggest problem is that a FREE search or a search without an valid legal opinion yields too many results and deciding which ones are a problem is a problem.
A FREE or paid trademark search that asks you to review hundreds or thousands of record results and determine if any are “close to what you intent to do with the mark” assumes that you understand all the rules and exceptions in trademark law and are able to apply it to the facts. Often business owners pick ‘trademarks’ because they describe the goods or services (or sound like they describe the goods or services) and others pick the same or similar ‘trademarks’ too. For instance, one vowel change, like using an ‘I’ instead of an ‘O’ will foul up a direct hit search but the ‘marks’ are still similar enough to have a likelihood of confusion refusal.
Here are the ten steps that the USPTO recommends for people searching their FREE TESS database (TESS online help) of trademark applications and registrations. The USPTO does THIS likelihood of confusion search AFTER they have made a presumptive classification of goods and services and AFTER a "dead-
To follow these instructions one must know the answers to at least these questions:
What is a thorough search?
What is a distinctive element?
What does ‘all forms’ mean?
What is a ‘legal word equivalent’?
When is it necessary to search component parts?
How do you search for more than one term?
What are phonetic equivalents?
How is the presumptive classification of goods and services decided?
Do marks only in the same presumptive classification of goods and services matter?
At the USPTO, if your applied-
Note: The USPTO does not search unregistered common law prior marks when deciding if a registrant has a right to register. The USPTO only determines (during the registration process) if the the potential trademark has a right against other registered or pending marks (including intent-
Watch out for trademarks that are abandoned but that are still being used by the registrants! Someone who has continuously used a trademark in commerce but forgets to file their Section 8 renewal may still oppose, cancel or sue a newcomer in the market! (See ZombieTrademark.com for more information.)
Opposition and Cancellations Proceedings (and infringement suits) can also be brought by prior users under claims of Dilution and the dilution does NOT have to come from the same type of goods.
Automated USPTO Checks Before Likelihood of Confusion Checks
When a USPTO Federal Trademark application is first submitted, an initial examination is completed by the automated processing system:
1) Primary formalities check for minimum statutory requirements and fees to determine if the applicant receives a filing date;
2) Assignment of a serial number/control number;
3) Presumptive classification of goods and services and determination that the correct number of fees have been submitted; and,
4) Expert system review, including:
A later complete examination includes a likelihood of confusion search for conflicting marks with other federally registered marks and prior pending marks under 15 U.S.C. §1052 also known as Section 2(d) of the Trademark Act. Conflicts are based on the Likelihood of Confusion, Mistake or Deception. Likelihood of confusion is the most common refusal for trademarks or service marks.
There is no mechanical test for determining likelihood of confusion. The issue is not whether the actual goods are likely to be confused but, rather, whether there is a likelihood of confusion as to the source of the goods. In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Each case must be decided on its own facts.
Search engine results "which provide little context to discern how a term is actually used on the webpage that can be accessed through the search result link" may be insufficient to determine the nature of the use of a term or the relevance of the search results to registration considerations". In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828 (Fed. Cir. 2007). See also In re Remacle, 66 USPQ2d 1222, 1223 n. 2 (TTAB 2002). Search engine results that only look for direct hits do not take into account that trademark applicants may choose their own descriptors of their goods or services to be completely different from how someone else might describe the same good or service or a related good or service. Recent case examples with refusals affirmed or oppositions sustained where similar goods or services were described differently include:
Sunglasses vs. spectacles;
Educational learning cards vs. books;
Providing training programs vs. conducting seminars;
Tavern and night club vs. restaurant and bar;
Curtain fabric; curtains vs. interior window shutters.
Search engine results that look at IC classifications mechanically to determine likelihood of confusion or relatedness rather than the actual goods or services may be flawed because the international classifications have been constructed for the convenience of the USPTO. It is well recognized that the system of dividing goods into classes is a USPTO administrative convenience and that a determination on the relatedness of the respective goods is not restricted by this artificial boundary. See Jean Patou Inc. v. Theon Inc., 9 F.3d 971, 29 USPQ2d 1771 (Fed. Cir. 1993); Graco Inc. v. The Warner-
Whether a trademark is likely to be confused with another trademark is a test of many factors including how a mark is used (such as what does the context tell you about commercial impression?). Similarlity or exactness in spelling (how search engines work) is only one factor. Free trademark searches give false security if one checks for a direct hit and thinks that no direct hit means the mark is safe to use. There is a wide availability of FREE search engines yet likelihood of confusion is a persistent and common refusal. Even a thorough, expanded search of registered and pending marks (like the search done by a trademark examiner) does not uncover unregistered marks, unregistered trade names, and the potential for dilution claims that may become issues in an inter parties proceeding (opposition or cancellation).
For some potential trademarks, a finding of similarity as to any one factor (sight, sound or meaning) alone “may be sufficient to support a holding that the marks are confusingly similar.” Trak, Inc. v. Traq Inc ., 212 USPQ 846, 850 (TTAB 1981); General Foods Corp. v. Wisconsin Bottling, Inc ., 190 USPQ 43, 45 (TTAB 1976); In re Mack , 197 USPQ 755, 757 (TTAB 1977); Krim-
For examples of office actions (refusals) and case law examples for conflicting marks, see Section 2(d) Refusals. For all of the steps involved in the trademark process, see the USPTO trademark web site or our Not Just Patents site at StepstoaTrademark.com. Avoid weak trademarks by taking the steps to VerifyATrademark first.
Newcomers To A Market Should Be Careful In Selecting a Name
“In considering the similarity of the marks, it also should be kept in mind that a party, in choosing a name or mark in a field already occupied, has an affirmative duty to avoid all possibility of confusion with existing names and marks. Union Carbide Corp. v. Ever-
Verifying a trademark against conflicting marks and conflicting trade names may avoid a likelihood of confusion refusal, opposition or cancellation, or infringement suit. Searching should be done BEFORE investing a lot of time and money in what could be a weak or infringing mark. A noninfringing trademark can be a money and time saver as well as a way to avoid lawsuits.
How Long Does it Take to Get A Trademark Registered?
Trademark applications with the USPTO that have no conflicting marks and that meet all the legal requirements (including containing an acceptable specimen of the mark in actual use) may register in as little as 7-
Trademark applications with conflicting marks or other issues may require significant legal work and time to resolve the problems. Refusals may lead to abandonment or delays of months to even years.
Abandonment of a Trademark from 15 USC 1127:
A mark shall be deemed to be ‘‘abandoned’’ if either of the following occurs:
(1) When its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances. Nonuse for 3 consecutive years shall be prima facie evidence of abandonment. ‘‘Use’’ of a mark means the bona fide use of such mark made in the ordinary course of trade, and not made merely to reserve a right in a mark.
(2) When any course of conduct of the owner, including acts of omission as well as commission, causes the mark to become the generic name for the goods or services on or in connection with which it is used or otherwise to lose its significance as a mark. Purchaser motivation shall not be a test for determining abandonment under this paragraph.
How Can a Likelihood of Confusion be Avoided?
Pick an Inherently Distinctive Mark (a potentially Strong Trademark) and Have a Thorough Trademark Verification Done.
We suggest a Not Just Patents Five Step Verification:
To Verify a potential trademark is strong, available to use, and ready to register, the process should be more than a direct hit federal search. To maximize the commercial strength and minimize the weaknesses of a trademark, a potential trademark user should:
5) Verify that the Goods and Services ID is both the correct and the maximum claim that are user can make and verify that the Goods and Services ID meets USPTO requirements before filing.
The USPTO will not refuse a proposed trademark on the basis of the right to use the mark, only the right to register (different verifications) . The USPTO and the TTAB have no authority to determine the right to use, or the broader questions of infringement or unfair competition (TBMP §102.01), but only the right to register on the federal registers. However, the right to use a mark may be challenged by a prior user under the Lanham Act in federal court. The Lanham Act provides that a registered mark, even if it has become incontestable, still may be challenged "to the extent, if any, to which the use of a mark registered on the principal register infringes a valid right acquired under the law of any State or Territory[common law marks] by use of a mark or trade name continuing from a date prior to the date of registration under this chapter of such registered mark." 15 U.S.C. 1065 as quoted in Advance Stores Co. Inc. v. Refinishing Spec. Inc., 188 F.3d at 411 (6th Cir., 1999).
This is a good time to search out other goods and service categories that may be added later to verify the right to use the mark on these and file an intent to use. Ownership of one registration, even if it is incontestable, does not give the applicant a right to register the same or similar mark for different goods or services, even if they are closely related to the goods or services set forth in the incontestable registration. Reserving the rights in advance with an Intent to Use application may be a good strategy.
Creation of a Mark That is Distinctive Rather Than Merely Descriptive
When creating trademarks, one essential requirement in order to be registrable on the USPTO Trademark Principal Register is that the trademark is distinctive. What is a distinctive name for the purposes of obtaining a trademark from the United States Patent and Trademark Office (USPTO) is found in the Trademark Manual of Examining Procedure (TMEP) in Section 1209.01.
Distinctiveness is the opposite of descriptiveness for trademark purposes. The distinctiveness of trademarks varies along a continuum (often depending on use) from being highly distinctive (or inherently distinctive) to being merely descriptive or generic. Highly distinctive marks that are arbitrary, fanciful or suggestive are registrable on the USPTO Trademark Principal Register.
Distinctiveness also depends on how the mark is being used. Distinctiveness of mark must be measured in connection with particular goods or services being offered, and cannot be determined in the abstract. “The protection accorded trademarks [and service marks] is directly related to the mark's distinctiveness.” Sara Lee Corp. v. Kayser-
A mark is merely descriptive under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1), if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the relevant goods and/or services. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986); In re MetPath Inc., 223 USPQ 88 (TTAB 1984); In re Bright-
A term need not describe all of the purposes, functions, characteristics or features of the goods and/or services to be merely descriptive. For the purpose of a Section 2(e)(1) analysis, it is sufficient that the term describe only one attribute of the goods and/or services to be found merely descriptive. In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973); TMEP §1209.01(b).
Descriptiveness is considered in relation to the relevant goods and/or services. The fact that a term may have different meanings in other contexts is not controlling on the question of descriptiveness. In re Chopper Industries, 222 USPQ 258 (TTAB 1984); In re Bright-
The two major reasons for NOT protecting descriptive marks are: (1) to prevent the owner of a mark from inhibiting competition in the sale of particular goods or services; and (2) to avoid the possibility of costly infringement suits brought by the registrant. This thus enables businesses and competitors to have the freedom to use common descriptive language when merely describing their own goods or services to the public in advertising and marketing materials. In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215 (C.C.P.A. 1978); In re Colonial Stores, Inc., 394 F.2d 549, 157 USPQ 382, 383 (C.C.P.A. 1968); Armour & Co. v. Organon Inc., 245 F.2d 495, 114 USPQ 334, 337 (C.C.P.A. 1957); In re Styleclick.com Inc., 58 USPQ2d 1523, 1526-
Marks that are merely descriptive matter may potentially be considered to be registered on the Principal Register if they have acquired distinctiveness with Secondary Meaning (must be proven with evidence and at least 5 years of use). Generic marks (common or class names for goods or services) are not registrable as trademarks under either the Principal or Supplemental Register. Composite marks, mark that are partly descriptive or generic and partly suggestive, arbitrary or fanciful, may be registrable on the Principal Register with the descriptive or generic part disclaimed for exclusive use. See Trademark Disclaimer Requirements for more information.
Not Just Patents ® Legal Services provides a very economical package for USPTO (or international) Trademark Registration and provides domestic representation for foreign applicants.
If you have already received a refusal, we can provide a quick and economical Response to Office Action (ROA). We can also represent your business in an opposition or cancellation proceeding. If you are being opposed or cancelled, call SOON! The response periods for a Notice of Opposition or Petition to Cancel are very short and if you don’t act quickly you may find yourself in default.
Not Just Patents ® and Aim Higher® are federally registered trademarks of Not Just Patents LLC for Legal Services.
For more information from Not Just Patents, see our other sites: