Likelihood of Confusion and Registering a Potential Trademark with the USPTO

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:

• secondary formalities review,
• descriptive search using various dictionaries or encyclopedias (standard dictionaries, computer dictionaries, geographic dictionaries, specialized dictionaries, etc.),
• atlas with description of the area and products for which the area is known,
• surname search using telephone listings,
• foreign translation search with word limit (e.g., French, Spanish, German, Italian),
•  co-pending search:  Same applicant plus:  a) same mark, or, b) goods and services with at least one match,
• likelihood of confusion "dead-on" search ("dead-on" for entire mark using syllable and phonetic searches),
• search of data base for disclaimers of the same word(s) in other marks,
• search of database for abandoned applications with the same mark and goods/services.

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-Graham Company, 164 USPQ 400, 402 (TTAB 1969).

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).

The ten steps that the USPTO recommends in TESS online help search are:

1.     Conduct a Thorough Search.
2.     Search All Forms of all the Distinctive Elements of the Mark.
3.     Search Each Distinctive Element Alone.
4.     Search Acronyms AND What They Stand For.
5.     Search All the Legal Word Equivalents of Terms.
6.     Search Component Parts of Individual Terms When Necessary.
7.     Searches for Marks Consisting of Two or More Separate Terms Should be Conducted so that the Two Terms Would be Retrieved Whether They Run Together or are Separate.
8.     Search Pictorial Equivalents for Distinctive Terms and Vice Versa When Appropriate.
9.     Search all Phonetic Equivalents
10.     Search all English Equivalents

Note: Although trademark dilution is a ground that the trademark Board may consider in the context of an inter partes proceeding, amended Section 2 of the Trademark Act makes clear that it is not a ground for ex parte refusal by examining attorneys during the examination phase.

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. 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 7-8 months. The 2012 average time to registration or abandonment was 10.2 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. Refusals may lead to abandonment or delays of months to even years.

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.

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. Aim HigherSM is a pending USPTO Federal Trademark Application (SN 85834837-service mark for Legal Services).

Call 1-651-500-7590 or email info@notjustpatents.com for  Trademark Help; 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

Steps to a Patent    How to Patent An Invention

Patent Search Steps

Strong Trademark  Trademark Inherent Strength   Enforcing Trade Names

Common Law Trademarks     Trademark Goodwill Trademark Protect

Should I Get A Trademark or Patent?

Patentability Evaluation

Trademark Disclaimers   Trademark Dilution     Oppose or Cancel?

Examples of Disclaimers  Business Name Cease and Desist

35 U.S.C. 101 Inventions patentable.

Verify a Trademark  Be First To File   How to Trademark Search

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.

Trademark Statistics    Business Name Cease and Desist Letters

How To Answer A Trademark Cease and Desist Letter

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  $199 Statement of Use

How To Show Acquired Distinctiveness Under 2(f)

Filing Requirements for Patent Applications

Trademark Attorney for Overcoming Office Actions

Functional Trademarks   How to Trademark     Surname Refusal

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

Examples of Refusals for Likelihood of Confusion  DuPont Factors

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

Descriptive Trademarks Trademark2e.com  Likelihood of Confusion 2d

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

Pseudo Marks    How to Reply to Cease and Desist Letter

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

Overcome Merely Descriptive Refusal   Overcome Likelihood Confusion

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  

Trademark Searching Using TESS  Trademark Search Tips

TSDR Trademark Status and Document Retrieval

What is a Small or Micro Entity?

Published for Opposition see also Opposition Steps/Cancellation Steps

Counterclaims and Affirmative Defenses

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 Oppose?

Changes To Implement the First Inventor To File Provisions of the America Invents Act

What is the Difference between Principal & Supplemental Register? What If Someone Files An Opposition Against My Trademark?

Patent steps

How to Respond Office Actions  DIY Overcoming Descriptive Refusals

PCT Patent Application information

Trademark Clearance Search   DIY Trademark Strategies

Provisional Patent Effect on Patentability

Samples of Responses to Office Actions

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

TTAB/TBMP Discovery Conferences & Stipulations

TBMP 113 Service of TTAB Documents  TBMP 309 Standing

Examples Office Action Responses More Examples

Trademark Incontestability  TTAB Manual (TBMP)

Trade Secrets

What are Dead or 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  Zombie Trademark

Chart of Patent vs. Trade Secret

What Does Published for Opposition Mean?

How to Keep A Trade Secret

Acquired Distinctiveness  2(f) or 2(f) in part Extension of Time to Oppose