How to Avoid A Trademark Application That is Likely To Be Refused Because of Confusion
If your trademark is too much like someone else’s trademark and that someone else registered their trademark with the USPTO or their trademark application was pending before your application, your application is likely to be refused.
USPTO Trademark Examining Attorneys often refuse to register an applicant's mark under Section 2(d) of the Trademark Act of 1946, 15 U.S.C. § 1052(d), on the ground that applicant's mark is likely to cause confusion with the previously registered or pending mark. This is also known as a likelihood of confusion refusal. Other conflicts that cause refusals are based on the likelihood of mistake or deception. Likelihood of confusion is the most common refusal for trademarks or service marks along with common refusals based on goods and services identification problems. Approximately 70% of USPTO trademarks are initially refused registration. ( Thirty percent of all TEAS PLUS applications proceed directly to publication without an office action. See USPTO Trademark Notice) Other reasons for refusal include: Merely Descriptive and Deceptively Misdescriptive; Primarily Geographically Descriptive and Primarily Geographically Deceptively Misdescriptive; Primarily Merely a Surname.
There is no mechanical test for determining likelihood of confusion, many legal principles are involved including distinctiveness and distinctive elements; whether a mark is strong or weak; are the goods or services related; whether or not a mark has a pseudo mark; similarity and dissimilarity of the marks and others. A likelihood of confusion determination under Section 2(d) is based on an analysis of all of the probative facts in evidence that are relevant to the DuPont factors bearing on the likelihood of confusion issue.
The USPTO international classification system has been set up for the convenience of trademark offices worldwide, and serves the interest of merchants and manufacturers who own marks in the United States, as well as their trademark counsel. In the United States, a registrant's rights are determined by the wording contained in the identification of goods. By contrast, in countries that permit an applicant to include "all the goods" within a particular class, the classification system is more critical in determining the trademark owner's rights. See Jean Patou, Inc. v. Theon, Inc., 9 F.3d 971, 975, 29 USPQ2d 1771 (Fed. Cir. 1993).
The Thirteen DuPont Factors
In re E.I. DuPont DeNemours & Co., 476 F.2d 1357, 1361 (CCPA 1973), established a test [the thirteen DuPont factors] for determining whether there is a likelihood of confusion:
In testing for likelihood of confusion . . . the following, when of record, must be considered:
(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 or services as 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-
(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 (sales, advertising, length of use).
(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 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 (house mark, `family' mark, product mark).
(10) The market interface between applicant and the owner of a prior mark. . . .
(11) The extent to which applicant has a right to exclude others from use of its mark on its goods.
(12) The extent of potential confusion, i.e., whether de minimis or substantial.
(13) Any other established fact probative of the effect of use.
The following section is taken from the USPTO’s TESS Online Help. For more information and specific examples on how to search see: How To Trademark Search Using TESS; How to Search for Marks Published for Opposition; How to Search For Marks on the Supplemental Register.
USPTO Likelihood of Confusion Search Principles
(From TESS Online Help )
Following are the likelihood of confusion search principles used by the USPTO that you may want to consider prior to submitting a trademark application. You must decide which of these search principles may be appropriate for your trademark search. Even if you diligently follow all these search principles, that does not necessarily guarantee that you will find all potential citations under Section 2(d) of the Trademark Act.
We Suggest Going Further Than Just A Trademark Search
Not Just Patents® Legal Services starts with these five steps:
1) Verify Inherent Strength (this avoids merely descriptive, geographically descriptive, likelihood of confusion and other office actions). If a mark is not inherently strong as is, are there additions to the mark or changes to make it stronger?
2) Verify Right to Use, (this avoids likelihood of confusion refusal office actions and others)
3) Verify Right to Register, (this avoids many types of refusals including merely descriptive, deceptively misdescriptive, geographically descriptive and others that can often be predicted)
4) Verify the potential mark (as currently used) Functions As A Mark, and (this avoids specimens refusals, trade name refusals, and others. The USPTO is looking for valid use not just any use of a mark.)
5) Verify that the Goods and Services ID is both the correct and the maximum claim that are user can make and verify that the Goods and Services ID meets USPTO requirements before filing. (This avoids office actions to correct incorrect IDs which can slow down a registration. Incorrect IDs may be corrected during the prosecution of a trademark if they do not materially alter the mark or the ID. Correcting problems before application saves time and money. Filing in a new class after an application has been submitted to cure a problem ID is the same price as a new application in that class.)
*We don’t stop here but this is a good start!
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