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The 'Likelihood of Confusion' Test

There are several common reasons the U.S. Patent and Trademark Office (USPTO) refuses to register a trademark. Among the most common is the likelihood of confusion with another registered trademark. The USPTO can do this because your mark may conflict with an existing trademark or a pending trademark application filed before yours.

Before paying your nonrefundable filing fees to the USPTO, determine if your proposed trademark will pass the "likelihood of confusion" test below.

Likelihood of Confusion Test

This is a legal basis that the USPTO may use to refuse registration of your trademark. The USPTO trademark refusal rationale is to avoid trademark infringement with a similar trademark.

After a trademark application is filed, the assigned USPTO examining attorney will search the records. They will determine if a conflict exists between the mark in the application and another mark. The other mark must be already registered or pending before the USPTO.

The examining attorneys with the USPTO use two principal factors in considering granting a trademark or service mark.

Principal Factors

The two principal factors in determining whether there is a likelihood of confusion are:

  • The similarity of the marks
  • The commercial relationship between the goods and services listed in the application

Similarity of the Marks

The initial test here is whether, by name alone, a consumer would confuse it with an existing mark. The marks do not have to be identical to find a conflict. Your trademark does not need to be identical to the currently registered mark. The issue falls on whether a reasonable person would be confused by the existence of two similar marks.

Here are some examples:

  • If you applied for the mark "Apple," then it is similar to the computer company's registered mark "Apple." It is identical and would confuse others by the name alone.
  • If you applied for the mark "AppL," then it may be found to be still similar to the computer company's registered mark "Apple." Phonetic spellings can be too similar.

Commercial Relationship Between the Goods and the Mark

When you file a trademark application, you must specify a classification of goods or services. This is sometimes called the trademark class.

Similar to the mark, the goods and services do not have to be the same for an examining attorney to reject it. It may be enough that the marks are similar and the goods and services related.

Here are some examples:

  • If you filed the trademark application for "AppL," but your trademark class of goods is for dog toys, then it likely would not confuse a consumer. An examiner may reject your registration.
  • You filed the trademark application for "AppL."Your trademark class of goods is for electronic goods. The pre-existing "Apple" trademark class is also for electronic goods. It would confuse consumers since it is the same class of goods. An examiner will reject your application.

Steps To Take if a Conflict Exists With Another Pending Application

Suppose a conflict exists between your mark and a mark in a pending application filed before your application. In that case, the examining attorney will notify you of the potential conflict. At that point, you can amend your application or provide specimens in support of your mark.

Another option the examining attorney may take is to suspend action on your application until they decide on the other application.

If the examiner grants the earlier filed application registration, the examining attorney will reject yours. The USPTO will refuse registration of your mark because of the likelihood of confusion.

Steps To Take After a Mark Refusal

Suppose a conflict exists between your mark and a registered mark. In that case, the examining attorney will refuse registration under the likelihood of confusion test. You can file an appeal. An appeal requires an additional fee and an appeal brief. You can request an oral hearing in front of an appeal board.

Other Issues To Consider in Trademark Law

Following are answers to some common questions about the confusion test and trademark law.

What role does social media play in the likelihood of confusion test?

The USPTO examining attorney will review social media and conduct an internet search during your application process. Social media impacts the likelihood of confusion tests due to today's business landscape. Many startup companies create social media pages to market their company. Social media pages are often made before thinking about becoming a trademark owner. Businesses should be careful of potential trademark infringement of existing marks.

What is a federal trademark?

A trademark owner has common law rights in a mark used in commerce without registering it. However, there are substantial reasons why an entrepreneur should register their trademark nationally. A federally registered trademark with the USPTO provides nationwide protection.

What does a federal trademark grant the trademark owner?

It gives exclusive rights to the trademark owner to:

  • Use the ® symbol
  • Sell goods (or services if a service mark) under the trademark
  • Ability to license or assign the mark in whole or in part
  • Ability to sue for trademark infringement in federal court

When is the first time I should consider the likelihood of a confusion test?

You should consider the likelihood of confusion test when you are selecting a:

  • Brand name
  • Business name
  • Logo

Ensuring that your trademark does not create confusion with an existing federal trademark is crucial. If you do not, you may get a cease and desist letter. This could force your company to rebrand, which is costly.

Will the USPTO do a preliminary search for me to see if there is a likelihood of confusion?

The USPTO will not conduct preliminary searches for conflicting marks before an applicant files an application. The USPTO cannot provide legal advice on whether a particular mark can be registered.

What is an office action?

An office action is an official written communication from the USPTO to the trademark applicant. An office action may address:

  • A request for more information
  • A need for amendments to your application

What is TEAS in trademark applications?

TEAS stands for Trademark Electronic Application System. TEAS is an online platform the USPTO provides that allows applicants to manage their trademark applications electronically.

What is a service mark?

A service mark is a type of intellectual property protection that identifies a business's services. Service marks are similar to trademarks, but they apply only to services.

Get Legal Advice About a Rejected Trademark Application From a Trademark Attorney

Before you go through the trademark registration process, you should do some research. A significant first step is consulting with a trademark lawyer. Many attorneys can help you conduct a trademark search in trademark databases. Before investing money in trademark protection, find out the law and the facts. An intellectual property lawyer can give you legal help with a trademark rejection. For more information, visit FindLaw's' Intellectual Property section.

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