by Brianna Pruitt
Under the Lanham Act, a trademark is “any word, name, symbol, or device, or any combination thereof” that distinguishes and indicates the source of goods or services. Trademarks are an immensely valuable asset for a business to create brand identity, boost market value, and safeguard against brand appropriation.
What is Likelihood of Confusion?
Likelihood of confusion means that consumers are likely to mistakenly believe that your goods or services and another’s come from the same source. A likelihood of confusion analysis for trademark applications is generally viewed as two inquiries. First, are the marks confusingly similar? Second, do the marks serve related goods or services?
As to the first inquiry, your trademark and another’s trademark do not have to necessarily be identical to each other to trigger a likelihood of confusion. Likelihood of confusion can result from similarity in sound, appearance, meaning, or overall commercial impression. For example, “Law Firms” and “Law Firmz” would be confusingly similar due to their similarity in pronunciation (sound), even though they are spelled differently.
As to the second inquiry, marks must also share related goods or services associated with those marks. According to the USPTO, goods or services may be related if “identical, similar or competitive; used together; used by the same purchasers; advertised together; or sold by the same manufacturer or dealer.” This may include goods or services a consumer could reasonably expect a brand to offer in the future. For example, a brand selling soda and a different brand selling juice would likely not be able to share the same mark due to the similarity of their goods.
However, if marks do not share similar or related goods or services, the marks may both enjoy the benefit of registration. Thus, “DOVE” for soap and “DOVE” for chocolate can both be registered trademarks without likelihood of confusion because of the difference in goods (soap and chocolate).
When applying for a trademark registration with the USPTO, an examining attorney will review the federal register for already registered or pending marks that may be confusingly similar to your mark. If the examining attorney determines a likelihood of confusion, they will issue a refusal, or office action, on your application. Applications refused on likelihood of confusion are refused on both the principal and supplemental register. You may have the opportunity to respond to the examining attorney’s refusal. Ideally, it’s best to avoid a refusal altogether.
How to Avoid a Likelihood of Confusion Refusal
Likelihood of confusion is the most common reason for trademark registration refusal according to the USPTO. To avoid a likelihood of confusion refusal, a thorough trademark search should be completed to ensure that your mark is not confusingly similar to another mark sharing related goods or services. However, the issue of likelihood of confusion is rarely black and white as the analysis focuses on the confusion of an ordinary consumer in the marketplace and may
sometimes be fairly subjective. As the issue can be quite complex, it’s important to work with an attorney who has experience and expertise with trademarks at the USPTO. At Beusse Sanks, our attorneys have the requisite experience and expertise needed to avoid a likelihood of confusion refusal at the USPTO and to further protect your trademark(s) post issuance. We provide comprehensive trademark searches and recommendations prior to applying, trademark registration assistance, and more! Our team uses a client-focused approach by taking the time to understand your business’ specific needs and not simply provide IP services, but IP solutions.