Trademarks such as brand and product names, slogans, logos, and taglines are designed to identify and distinguish businesses, goods, and services from others in the marketplace; they act as a source identifier, or they should. Every company wants its brand to stand out from competitors, and no company wants a competitor to build a brand that looks or sounds like its own. That is why registering a trademark with the United States Patent and Trademark Office (USPTO) is so important. It’s also why the USPTO will deny any application for a mark that creates a “likelihood of confusion” with an existing registered mark.

Finding that a “likelihood of confusion” exists between an applied-for mark and a registered mark or a pending application with an earlier filing date is one of the most common reasons the USPTO refuses trademark applications. Accordingly, anyone considering applying for a new mark should conduct a thorough trademark search to look for similar marks before investing the time and effort on a trademark likely to hit the likelihood of confusion wall. Applicants should also understand what likelihood of confusion means and how the USPTO evaluates proposed marks for these issues.

What Does “Likelihood of Confusion” Mean?

When the USPTO receives a new trademark application, an examining attorney will evaluate the proposed mark by, among other things, searching USPTO records to determine whether there is a conflict between the proposed mark and a mark that is either registered or pending in the USPTO.

Section 2(d) of the Lanham Act provides that an examining attorney may refuse to register a mark “which so resembles a mark” registered or pending with the USPTO “as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive…”

Likelihood of confusion exists between trademarks when they are so similar and the goods or services they are used with are so related that consumers would mistakenly believe they come from the same source. Marks need not be identical to create a likelihood of confusion; similarity in appearance, sound, or meaning can be and often will support a denial under Section 2(d).

Factors Considered When Determining Likelihood of Confusion

When evaluating whether there is a likelihood of confusion between a proposed and existing mark, an examining attorney considers several factors set forth in the seminal case of In re E.I. du Pont de Nemours & Co. As Section 1207.01 the Trademark Manual of Examining Procedure (TMEP) notes, not all du Pont factors are relevant in every analysis, and the significance of or weight given to a particular factor may differ from case to case.

The TMEP further states that “although the weight given to the relevant du Pont factors may vary, the following two factors are key considerations in any likelihood of confusion determination”:

• The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression.
• The relatedness of the goods or services as described in the application and registration(s).

The 13 du Pont factors used by the USPTO when evaluating likelihood of confusion are:

1. The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression.
2. The similarity or dissimilarity and nature of the goods described in an application or registration or in connection with which a prior mark is in use.
3. The similarity or dissimilarity of established, likely-to-continue trade channels.
4. The conditions under which and buyers to whom sales are made, i.e., “impulse” vs. careful, sophisticated purchasing.
5. The fame of the prior mark.
6. The number and nature of similar marks in use on similar goods.
7. The nature and extent of any actual confusion.
8. The length of time during and the conditions under which there has been concurrent use without evidence of actual confusion.
9. The variety of goods on which a mark is or is not used.
10. The market interface between the applicant and the owner of a prior mark.
11. The extent to which the applicant has a right to exclude others from using its mark on its goods.
12. The extent of potential confusion.
13. Any other established fact probative of the effect of use.

An Inexact Science

As a quick glance at the 36 pages of TMEP Section 1207.01 makes clear, each of the du Pont factors involves complex issues and analyses of their own. And given that likelihood of confusion is a case-by-case evaluation, trademark applicants who are aware of similar registered marks are inherently rolling the dice when they proceed with their applications. Making matters even more uncertain, each of the 13 federal courts of appeal uses its own tests for evaluating whether a likelihood of confusion exists.

A USPTO examining attorney’s determination that there is a likelihood of confusion such that they will refuse registration is not necessarily the end of the road for an applicant, as they can appeal that decision to the Trademark Trial and Appeal Board.

Given how critical branding is to any business and the significant investment involved in developing and registering a trademark, consulting with experienced trademark counsel before proceeding with such efforts is of the utmost importance.

If you have questions about likelihood of confusion or need assistance registering your trademark, please contact the trademark attorneys at The Dobrusin Law Firm.