USPTO Likelihood of Confusion Search Principles
(From TESS Online Help)
Following are the likelihood of confusion search principles used by the USPTO that you may want to consider prior to submitting a trademark application. You must decide which of these search principles may be appropriate for your trademark search. Even if you diligently follow all these search principles, that does not necessarily guarantee that you will find all potential citations under Section 2(d) of the Trademark Act.
- Conduct a Thorough Search.
- Search All Forms of all the Distinctive Elements of the Mark.
- Search Each Distinctive Element Alone.
- Search Acronyms AND What They Stand For.
- Search All the Legal Word Equivalents of Terms.
- Search Component Parts of Individual Terms When Necessary.
- 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.
- Search Pictorial Equivalents for Distinctive Terms and Vice Versa When Appropriate.
- Search all Phonetic Equivalents
- Search all English Equivalents
Plan for a Successful, Strong Trademark
(Not Just Avoiding a Likelihood of Confusion)
A Plan For a Strong Trademark is one that looks ahead to issues like:
- Can I claim exclusive rights to use this trademark?
- Does this trademark meet the qualifications for being registered on the USPTO Principal Register?
- Is this trademark strong enough that others would want to license it from me?
- Does this trademark have potential to extend to other product lines?
- Is this mark inherently distinctive?
- Are there others users of this mark that could prevent me from using this mark or would sue me or prevent me from getting federal registration because they can prove they are prior users?
- Are there valid reasons for someone to oppose or cancel the mark because the mark doesn’t qualify for protection or because they have superior rights?
- Would the USPTO find a likelihood of confusion with someone else’s registered or pending trademark and prevent my registration of this mark?
- Would a court enforce the use of this trademark?
- Do I have to somehow acquire distinctiveness for this mark before it would be recognized as being protectable?
- Does this mark use such common terms that it would be called a weak trademark?
- Is this mark descriptive or deceptive or geographically descriptive?
- Do I use the mark in a way that increases my rights or am I using it in a way where it does not function as a trademark?
These are all good questions to consider before adopting a trademark for use because
if you are planning to succeed, it may be a good idea to be able to work that plan
rather than abandoning it. The abandonment rate of trademark applications at the
USPTO (trademarks that did not issue) is very high, about 40-
All of the above questions involve fact-
To prepare for a strong trademark, Not Just Patents® starts with these five steps:
1) Verify Inherent Strength (this avoids merely descriptive, geographically descriptive, likelihood of confusion and other office actions). If a mark is not inherently strong as is, are there additions to the mark or changes to make it stronger?
2) Verify Right to Use, (this avoids likelihood of confusion refusal office actions and others)
3) Verify Right to Register, (this avoids many types of refusals including merely descriptive, deceptively misdescriptive, geographically descriptive and others that can often be predicted)
4) Verify the potential mark (as currently used) Functions As A Mark, and (this avoids specimens refusals, trade name refusals, and others. The USPTO is looking for valid use not just any use of a mark.)
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. (This avoids office actions to correct incorrect IDs which can slow down a registration. Incorrect IDs may be corrected during the prosecution of a trademark if they do not materially alter the mark or the ID. Correcting problems before application saves time and money. Filing in a new class after an application has been submitted to cure a problem ID is the same price as a new application in that class.)
*We don’t stop here but this is a good start!
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