Likelihood of Confusion and Registering a Potential Trademark with the USPTO

When a USPTO Federal Trademark application is first submitted, an initial complete examination is completed by the trademark examiner. A 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. 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), and cases cited therein. Each case must be decided on its own facts. Trademark Manual of Examining Procedure (TMEP) 1207.01 Likelihood of Confusion.

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-Ko Corp. v. Coca-Cola Co ., 390 F.2d 728, 156 USPQ 523, 526 (CCPA 1968), In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988).

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.

Likelihood of Confusion is a Common Issue for Trademark Application Refusals, Oppositions and Cancellations, and Infringement Suits

The claim of likelihood of confusion or conflicting marks–where a proposed mark so resembles a previously registered or prior pending federal trademark as to be likely to cause confusion, mistake, or deception is one of the most common grounds for a USPTO trademark application refusal (along with lack of distinctiveness).

Any doubt regarding a likelihood of confusion is resolved in favor of the prior registrant.  Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988); TMEP §§1207.01(d)(i).

For examples of office actions (refusals) and case law examples for conflicting marks, see Section 2(d) Refusals.

Intent-to-use applications also afford some trademark protection to the applicant that where no such protection is available under common law. An example would be for a defendant's intent-to-use application for a particular mark gives defendant priority over anyone who uses mark after application date, and defendant may rely on intent- to-use date in defending infringement action for likelihood of confusion even though it has not yet been granted actual registration, since contrary ruling would eviscerate intent-to-use provisions and defeat their very purpose.  Lucent Information Management Inc. v. Lucent Technologies Inc., 45 USPQ2d 1019 (D. Del. 1997). Note: Many search firms and search databases do not search unregistered federal marks–causing potential problems with unregistered intent-to-use trademarks that can be used by the USPTO to refuse registrations on new potential marks.

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-to-use marks). The registrant must search for unregistered common law prior marks if the registrant wants to avoid possible oppositions, cancellations or infringement suits and must search for and avoid registered prior marks to avoid refusals and delays in the prosecution of a trademark (See Grounds for Oppositions for more information.) 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!

BUT the prior owners of registered and unregistered prior marks (“a mark or trade name previously used in the United States by another and not abandoned”) have a right to protest registrations of marks through oppositions or cancellations. Prior owners may search the USPTO applications and registrations for potential harm that may result from a registration and bring an inter partes (more than one party) action to oppose that registration (see Publication for Opposition) or try to cancel already registered marks.

The claim of likelihood of confusion or conflicting marks is not just a problem for registrations, it is also “the most frequently encountered issue in Board inter partes  proceedings [oppositions and cancellations].” Trademark Trial and Appeal Board Manual of Procedure (TBMP) 309.03(c) Grounds. (See Grounds for Opposition or Cancellation for more information on oppositions and cancellations.)

[Inter partes proceedings before the Trademark Trial and Appeal Board are similar to a civil action in Federal District Court. The Board is an administrative tribunal with jurisdiction over the issue of registrability only.]

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. See IPRQUIZ.com for a quiz on trademark oppositions and cancellations.

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-Ready Inc., 531 F.2d 366, 382 (7th Cir.), cert. denied, 429 U.S. 830, 97 S.Ct. 91, 50 L.Ed.2d 94 (1976). "A newcomer to a product field has a legal duty to select a mark that is totally dissimilar to trademarks already being used in the field." Jockey International, Inc. v. Burkard, 185 U.S.P.Q. (BNA) 201, 208 (S.D.Cal.1975). “[N]ewcomers to a field of business have an infinity of nonconflicting names from which to choose and have a duty to select a name which is totally dissimilar to a trade name and trademark already being used for related goods. Watkins' Products, Inc. v. Sunway Fruit Products, Inc., 311 F.2d 496, 499 (7th Cir. 1962) as quoted at 404 in St. Charles Mfg. Co. v. St. Charles Furniture Corp., 482 F.Supp. 397 (N.D. Ill., 1979).

Verifying a trademark against conflicting marks and conflicting trade names may avoid a likelihood of confusion refusal, opposition or cancellation, or infringement suit (see VerifyTM.com for more information). 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. Call Not Just Patents at 1-651-500-7590   for a quote on VerifyATrademark.

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 7-8 months. The 2009 average time to registration or abandonment was 11.2 months. (See the Not Just Patents web site TrademarkStatistics.com for more information on statistics, see Abandoned Trademarks for more information on DEAD trademarks and how they can still have common law rights if the marks are still being used and rights to cancel or oppose new marks.)

Trademark applications with conflicting marks or other issues may require significant legal work and time to resolve the problems. The time to registration or abandonment may be years. See Ideal Situation versus Lengthy and Expensive Situation and the timetables at Section 2(d) Office Actions for examples of actual timetables.

Abandonment of a Trademark Application (from USPTO Glossary)-A trademark application that has been declared abandoned is "dead" and no longer pending. Abandonment occurs under several circumstances. The most common reason is when the USPTO does not receive a response to an Office Action letter from an applicant within 6 months from the date the Office action letter was mailed. Another instance is when the USPTO does not receive a Statement of Use (or request for an extension of time to file a statement of use) from an applicant within 6 months from the issuance of a Notice of Allowance). Applications abandoned for failure to respond to an Office Action or a Notice of Allowance can be revived or reinstated in certain circumstances.

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 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:

1) Verify Inherent Strength,

2) Verify Right to Use,

3) Verify Right to Register,

 4) Verify the potential mark (as currently used) Functions As A Mark, and

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-Roth Corp., 81 F.3d 455, 464 [38 USPQ2d 1449] (4th Cir. 1996) as quoted in U.S. Search LLC v. US Search.com Inc., 63 USPQ2d 2013 (4th Cir. 2002). In other words, the same distinctive trademark for one set of goods and services may not be distinctive for another set of goods and services.

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-Crest, Ltd., 204 USPQ 591 (TTAB 1979); TMEP §1209.01(b).  A mark that describes an intended user of a product or service is also merely descriptive within the meaning of Section 2(e)(1).  Hunter Publishing Co. v. Caulfield Publishing Ltd., 1 USPQ2d 1996 (TTAB 1986); In re Camel Mfg. Co., Inc., 222 USPQ 1031 (TTAB 1984); In re Gentex Corp., 151 USPQ 435 (TTAB 1966). (Extracted from an actual trademark refusal under Section 2(e).)

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-Crest, Ltd., 204 USPQ 591 (TTAB 1979); In re Champion International Corp., 183 USPQ 318 (TTAB 1974); TMEP §1209.03(e).

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, 1526-1527 (TTAB 2001); In re Styleclick.com Inc., 57 USPQ2d 1445, 1448 (TTAB 2000). (Extracted from an actual trademark refusal under Section 2(e).)

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. Check out special offers at GreenDailyPass.com.

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 ®  is a registered trademark of Not Just Patents LLC with a USPTO Federal Trademark Registration (R/N 3556868-service mark for Legal Services) on the Principal Register.

Call 1-651-500-7590   or email info@notjustpatents.com for Responses to Office Action; File or Defend an Opposition or Cancellation; Patent or Trademark Searches and Application; Send or Respond to Cease and Desist Letters.

For more information from Not Just Patents, see our other sites.       

Patents

Trademarks

How to Patent An Invention

Steps to a Patent Search

Strong Trademark       Enforcing Trade Name Rights

Steps to Common Law Trademark Rights

Should I Get A Trademark or Patent?

Patentability Evaluation

Trademark Disclaimers-What are they, standard formats, etc.

Examples of Disclaimers  Business Name Cease and Desist

35 U.S.C. 101 Inventions patentable.

Verify a Trademark  Why Verify a Trademark?

35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent.

Using Slogans (Taglines), Model Numbers as Trademarks

Which format? When Should I  Use Standard Characters?

35 U.S.C. 103 Conditions for patentability; non-obvious subject matter.

What Standard Characters are Available?  Trademark Statistics

Stop Before You Send (Cease and Desist Letters)

35 U.S.C. 282 Presumption of validity; defenses

Trademark Refusals    Does not Function as a Mark Refusals

37 CFR § 1.53 Application number, filing date, and completion of application

Acceptable Specimen       Supplemental Register

What Does A USPTO Trademark Application Look Like?

Filing Requirements for Patent Applications

Trademark Attorney for Overcoming Office Actions

Functional Trademarks   How to Trademark

List of U.S. Patent Classifications

Grounds for Opposition & Cancellation     Cease and Desist Letter

How Do U.S. Patent Classifications Work?

Valid/Invalid Use of Trademarks     Trademark Searching

Patent Statistics     Sample Patent, Trademark & Copyright Inventory Forms

Examples and General Rules for Likelihood of Confusion

USPTO Search Method for Likelihood of Confusion

Proximate Function

Color as Trade Dress  3D Marks as Trade Dress

Invention Information-  What is the Invention?

Ornamental Refusal (a type of Specimen Refusal)

Patent Field of Search

Inherently Distinctive Trademarks

Patent search-New invention

Merely Descriptive Trademarks   Merely Descriptive Refusals

Patent Search-Non-Obvious

Register a Trademark-Step by Step

Difference between Provisional and Nonprovisional Patent Application

Likelihood of confusion-Circuit Court tests

How to Respond to Cease and Desist Letters

Converting Provisional to Nonprovisional Patent Application (or claiming benefit of)

Pseudo Marks     RegistrationOfATrademark.com

What Does ‘Use in Commerce’ Mean?    SCAM Letters

Shop Rights

Section 2(d) Refusals   ApplyToTrademark.com

Patent Pending see also Patent Marking

Typical Brand Name Refusals  What is a Family of Marks?

Patent Drawings

Trademark Steps Trademark Registration Answers TESS  TARR TDR

Trademark Searching Using TESS

TSDR Trademark Status and Document Retrieval

Reduction to Practice

Published for Opposition see also Opposition Steps/Cancellation Steps

How to Respond to Office Actions

What is a Compact Patent Prosecution?

Protecting Trademark Rights (Common Law)

Steps in a Trademark Opposition Process   How do I Know If Someone Has Filed for An Extension of Time to Opppose?

Statutory Invention Registrations

What is the Difference between Principal & Supplemental Register?

Patent steps

How to Respond to Office Actions

PCT Patent Application information

Trademark Clearance Search  Don’t Stop at a Weak Mark

Provisional Patent Effect on Patentability

ID of Goods and Services see also Headings (list) of International Trademark Classes

Broad Patents

Geographically Descriptive or Deceptive

Making Amendments in Response to Office Actions

Why do Federal Registrations of Trademarks Get Better Protection? Why do Distinctive Trademarks Get Better Protection?

Examples of Office Actions & Responses 2nd 3rd

Trademark Incontestability  TTAB Manual (TBMP) May 2011

Trade Secrets

What are Abandoned Trademarks? Can I Use An Abandoned Trademark?  Can I Abandon a Trademark During An Opposition?

State & Federal Trade Secret Laws

Differences between TEAS and TEAS plus

Chart of Patent vs. Trade Secret

What Does Published for Opposition Mean?

How to Keep A Trade Secret

Acquired Distinctiveness  Extension of Time to Oppose