Likelihood of Confusion
The United States Patent and Trademark Office (USPTO) examines every application for federal registration of a trademark for compliance with federal law and the Trademark Rules of Practice. One of the most common reasons for refusing registration is that a “likelihood of confusion” exists between the mark in the application and a previously registered mark or a pending application with an earlier filing date owned by another party.
Likelihood of confusion exists between trademarks when the marks are so similar and the goods and/or services for which they are used are so related that consumers would mistakenly believe they come from the same source. Each application is decided on its own facts, and no strict mechanical test exists for determining likelihood of confusion.
Similarity of Marks
To determine whether a likelihood of confusion exists, the marks are first examined for their similarities and differences. Note that in order to find a likelihood of confusion, the marks do not have to be identical. When marks sound alike when spoken, are visually similar, and/or create the same general commercial impression in the consuming public’s mind, the marks may be considered confusingly similar. Similarity in sound, appearance, and/or meaning may be sufficient to support a finding of likelihood of confusion, depending on the relatedness of the goods and/or services.
The following are examples of marks that would be considered similar:
Although spelled differently, the marks sound alike.
The marks look very similar, even though the one on the right uses a stylized font.
Because the marks include the same design element, they create a similar overall commercial impression, even though the one on the right also includes words plus the design.
Relatedness of Goods and/or Services
Even if two marks are found to be confusingly similar, a likelihood of confusion will exist only if the goods and/or services upon which or in conjunction with the marks are used are, in fact, related. Whether the goods and/or services are related is determined by considering the commercial relationship between the goods and/or services identified in the application with those identified in the registration or earlier-filed application. To find relatedness between goods and/or services, the goods and/or services do not have to be identical. It is sufficient that they are related in such a manner that consumers are likely to assume (mistakenly) that they come from a common source. The issue is not whether the actual goods and/or services are likely to be confused but, rather, whether a likelihood of confusion would exist as to the source of the goods and/or services.
The following are examples of related goods and/or services:
Goods and Services
The USPTO conducts a search for conflicting marks as part of the official examination of an application after a trademark application is filed. It is possible that the USPTO may issue a likelihood of confusion refusal, even if the applicant did his or her own search prior to filing the application. The USPTO must conduct its own search and make its own assessment of likelihood of confusion as part of the overall examination to determine whether all legal requirements have been satisfied.
If the USPTO concludes that a conflict exists between the applicant’s mark and a registered mark, registration of the applicant’s mark will be refused on the ground of likelihood of confusion. If a conflict exists between the applicant’s mark and a mark in an earlier-filed pending application, the USPTO will notify the applicant of the potential conflict and suspend action on the application pending final resolution of the earlier-filed application. The applicant’s mark will be refused on the ground of likelihood of confusion if the earlier-filed application becomes registered.
The USPTO cannot perform pre-application searches or provide advisory opinions about whether a possible conflicting application uncovered in a search will be a bar to registration.
No USPTO employee can provide you with advice as to a preferred course of action. Since procedural, tactical, and financial considerations are involved in the trademark process, you may wish to consult a private trademark attorney for a legal opinion. The USPTO cannot aid in the selection of an attorney.