One of the roles of a trademark is to distinguish the source of a product/service. If your trademark is similar to an existing trademark in sound, appearance, visual commercial impression, and they have related products and/or services, a customer will probably confuse the marks. This is known as a likelihood of confusion.
Practical tips on how to avoid likelihood of confusion include conducting a thorough trademark search for similarity and identity, paying attention to both visual and phonetic similarity, common law (unregistered but used) trademarks and foreign equivalents of words as they also count.
If any of the findings suggest similarity or identity, small changes in the trademark or logo might not completely solve the issue. Consulting with a trademark attorney will be the best option to build a strategy covering risks and potential claims.
If the examiner determines it will likely be confused with an earlier-filed trademark, your trademark application might be refused. Section 2(d) Refusals or Likelihood of Confusion Refusals occur before publication and the opposition period.
The response period to the refusal is 3 months with the possibility of extension for three more months for an extra fee if the application is filed directly with the USPTO, and 6 months without the right to extend if the trademark is filed in the United States under the Madrid Protocol.
The examiner may issue either an Office Action or a Suspension Notice.
You might receive an Office Action. Here, you have an obligation to provide a response to the examiner. The trademark application will be abandoned if you do not respond to the Office Action promptly.
In your response, you can provide arguments on the absence of conflict between trademarks. To have a thorough analysis and successful argumentation, you may need assistance from an attorney. You can also consider obtaining a Letter of Consent or initiating a cancellation process or other procedures. Depending on the circumstances, there might be other options available.
It is important to understand the criteria by which a USPTO examiner assesses the likelihood of confusion between trademarks. In the case of E.I. DuPont de Nemours & Co. v. Celanese Corp., the court identified the factors (DuPont factors) that the examiner should take into account. At the same time, the factors are not exclusive, and the examiner analyzes only those factors that are relevant to the particular case.
There are 13 DuPont factors, with the first two being key ones:
- Similarity or dissimilarity of marks.
- Nature of the goods and services.
- Trade channels used.
- Purchasing conditions.
- Fame of the existing mark.
- Similar marks with similar goods.
- Actual confusion between the marks.
- Length and conditions of concurrent use without confusion.
- Variety of goods and services associated with the marks.
- Market interface.
- Applicant’s right to exclude others.
- Extent of potential confusion
- Other established facts.
As for the similarity or dissimilarity of marks, the test is not whether the marks can be distinguished when subjected to a side-by-side comparison, but whether “the marks are sufficiently similar in terms of their commercial impression such that persons who encounter the marks would be likely to assume a connection between the parties.” When assessing the similarities between marks, the emphasis is on the perception of the average purchaser who has a general impression of trademarks.
When evaluating the nature of the goods and services, the following rule applies: the more similar the marks are, the less similar the goods or services must be to confirm the likelihood of confusion. The question isn’t whether people will mix up the products or services, but whether they’ll be confused about who makes or provides them.
As mentioned earlier, besides refusal, you may receive a suspension notice if, in the opinion of the examiner, there is the possibility of confusion of your trademark with the previously filed (conflicting) application (and not a registered trademark). Suspension Notice is a notice according to which the proceedings on the application are suspended, or simply paused.
The examiner will wait for the status of such an application to be updated. If the conflicting trademark is registered, you will receive an Office Action described above. Another possible outcome is if the conflicting application is dead, then the barriers to registration of your trademark will be eliminated.
There are different approaches to handling receiving a Suspension Notice. When you receive it, you can often read on a document that you are not obliged to answer, however it certainly does not mean that the response is prohibited. You can accelerate the process by tracking the conflicting applications, registrations, and their status changes, and communicating with an examiner. This helps you save time by not waiting for the examiner’s monitoring results, as their monitoring is conducted approximately every 6 months. In your response, you can provide evidence to the examiner that there is no similarity or identity between these trademarks, meaning the absence of conflict.
Likelihood of confusion is an obstacle, but it can be overcome with the right strategy. To ensure efficient use of resources and the best possible outcome, contact a trademark attorney.
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