Avoid Likelihood of Confusion
Author: Karen Y. Kim
You’ve selected a trademark and begun to build your brand, only to find out that there’s another business using a similar mark. This is not the place you want to be in. The purpose of a trademark is to provide your business with a distinctive identifier on which you can build your brand and stand out in the marketplace. It is prudent, therefore, to assess the existing landscape with a trademark search before choosing a mark. In order to be registered (and to avoid potential infringement), the mark you select must avoid likelihood of confusion with existing trademarks.
“Likelihood of confusion” refers to the idea that, upon seeing one trademark on a product or service, consumers believe that the product or service comes from the owner of a different, but similar trademark. Likelihood of confusion then means that two trademarks are so similar that consumers are confused into thinking the respective goods or services come from the same source.
Performing a trademark search can be especially important if you plan on registering your trademark with the USPTO. After filing an application, the examining attorney may issue an Office Action disclosing the reasons that the registration is refused. One of those possible reasons is the likelihood of confusion, which comes under Section 2(d) of the Trademark Act.
No trademark by which the goods of the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it―
(d) Consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, 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…
There are several factors to consider when analyzing whether a likelihood of confusion exists between two marks. These are called the DuPont factors. For the purposes of overcoming a refusal to registration, the two most important factors are:
- The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression; and
- The relatedness of the goods or services as described in the application and registration(s).
These two factors are connected. The greater the similarity between the marks, the less related the goods or services have to be to support a finding of likelihood of confusion.
Typically, an examining attorney will base a 2(d) refusal on these first two factors. However, the remaining factors should be considered if applicable:
- The similarity or dissimilarity of established, likely-to-continue trade channels
- The conditions under which and buyers to whom sales are made
- The number and nature of similar marks in use on similar goods
- The existence of a valid consent agreement between the applicant and the owner of the previously registered mark
- The fame of the prior mark
- Any actual confusion
- Concurrent use without evidence of actual confusion
Because the standard is confusingly similar, a new mark does not have to be identical to be confusingly similar to a registered mark. Changing or removing portions of a registered mark will not guarantee that a new mark is sufficiently distinguishable.
Examples of confusingly similar marks:
- MARTIN’s for wheat bran and honey bread and MARTIN’S for cheese
- GOTT LIGHT for water beverages and JOEL GOTT for wine
- TOTAL for yogurt and TOTAL for breakfast cereal
- VEUVE ROYALE for sparkling wine and VEUVE CLICQUOT for champagne
- GASPAR’S ALE for beer and JOSE GASPAR GOLD for tequila
- RICHARD PETTY’S ACCU TUNE for automotive service stations and ACCU-TUNE for automotive testing equipment
- SEYCOS for wristwatches and SEIKO for clocks and watches
- MULTIVOX for musical instruments and speakers and MAGNAVOX for electrical sound equipment
- CLEAN for cleaning products and MR. RUST for cleaning products
Examples where no likelihood of confusion found:
- CITIBANK for banking and financial services and CAPITAL CITY BANK for banking and financial services
- DEER-B-GON for animal repellant and DEER AWAY for repellant for repelling deer
- CATFISH BOBBERS (with “catfish” disclaimed) for fish and BOBBER for restaurant services
- GOLDEN CRUST for flour and ADOLPH’S GOLD’N CRUST for coating and seasoning for food items
- THE RITZ KIDS for clothing and RITZ for kitchen textiles
To reduce the risk of a likelihood of confusion, it is imperative that you have a trademark search performed prior to filing an application or using your trademark. This will indicate whether your mark is unique enough to avoid a likelihood of confusion with an existing mark.