Likelihood of Confusion: What Is It? And What Happens If My Trademark Application Is Refused Because Of It?

Are you concerned that your mark is similar to that of a competitor?  Or that a competitor’s mark is too similar to yours?   The standard for whether a conflict exists between two (2) trademarks is found in federal trademark law and is known as “likelihood of confusion.”  Issues of likelihood of confusion arise in three ways: during the federal trademark application process, in United States Patent and Trademark Office (USPTO) proceedings, and federal court litigation.

Our focus here is on the federal trademark application process.   The number of trademark applications initially refused by the USPTO fall in the range of 50-70% of all applications.  While many of these initial refusals are easily addressed by applicants, others are not.  One of the more challenging USPTO refusals to overcome is a refusal based upon a likelihood of confusion with a registered mark or prior filed application.

Likelihood of Confusion 

The Federal Trademark Act (Lanham Act) § 2, 15 U.S.C.A. § 1052, reads as follows:

No trademark by which 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.  Lanham Act § 23,15 U.S.C.A. § 1091.

The USPTO looks at each federal trademark application that is filed with the USPTO to ensure compliance with federal trademark law.  A common reason why the USPTO refuses a trademark application (and issues an office action) is when the USPTO believes that a likelihood of confusion exists between the mark in an application and a mark that was previously registered or previously applied-for, in violation of the above-referenced section.  A USPTO Trademark Examining Attorney will refuse an application if he/she concludes that the applicant’s mark as used in connection with the specified goods/services so resembles any registered mark(s) as to be likely to cause confusion or mistake as to the source of the goods/services.  In other words, a likelihood of confusion exists between two trademarks when the marks are so similar and the goods/services of the two trademarks are so related that customers would mistakenly believe that they come from the same source.   Since the purpose of trademark law is to prevent unfair competition and protect consumers by indicating the true source of goods/services, “likelihood of confusion” is a legal mechanism to further those goals.

There are three (3) prominent misconceptions about likelihood of confusion that require clarification:

• First, a likelihood of confusion does not require that the marks be identical; marks can be found confusingly similar based on similarities in sight, sound or commercial impression of the marks.
• Second, a likelihood of confusion is not something that can be avoided by changing an existing mark by 20-30%; there is no such formula in federal trademark law; and
• Third, goods/services can be in different classes and still be related for purposes of likelihood of confusion; therefore, if there are two (2) identical marks on goods/services in two (2) different classes, a refusal can still issue.

There are multiple factors that may be considered by courts in determining whether a likelihood of confusion exists, but this post is focused on the USPTO’s analysis of likelihood of confusion particularly when examining U.S. federal trademark applications.  The USPTO’s analysis is focused on whether (1) the marks are similar (i.e. in sight, sound or meaning); and (2) whether the goods/services are related while looking primarily at the information recited in the application and registration (or prior filed application) only.   

Similarity of Marks 

According to the USPTO, to determine whether a likelihood of confusion exists, the marks are first examined for their similarities and differences.  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, 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 were initially refused by the USPTO based upon similarity in sight, sound or commercial impression:

Applied-for Mark	Registered or Prior-Filed Application
MAMBO	MOMBOS
HIGH POINT	HIGHPOINT
THE CAKER
MAYFAIR HOTEL	ROBERTS MAYFAIR
STOMPIN’ GROUNDS RESTAURANT	STOMPING GROUNDS ESPRESSO
MAGNAVOX	MULTIVOX
HYPNOTIQ	HOPNOTIC
CITY WOMAN	CITY GIRL

Relatedness of Goods and/or Services

As discussed above, goods/services do not have to be identical for the USPTO to find a likelihood of confusion.  According to the USPTO, a likelihood of confusion can exist if the goods/services are somehow related.  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.  Whether the goods/services are related is determined by examining the commercial relationship between the goods/services in the pending application versus the registration and/or prior-filed application.  Goods/services that are complementary or can act as substitutes for each other may be considered related for purposes of this analysis.   We are aware that one of the ways that the USPTO determines relatedness is to find whether goods that are potentially conflicting have ever been sold by the same source.

Therefore, since a big luxury brand may have a trademark registration that covers candles and luggage, the USPTO may deem those goods related.  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 non-competitive goods held to be confusingly similar:

What happens if the USPTO decides there is a likelihood of confusion with another mark?

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.   The applicant will have six (6) months to respond to an initial or final office action.

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 the application will be suspended pending a final resolution of the earlier-filed application.  If the earlier-filed application matures into a registration, the applicant’s mark will be refused on the ground of likelihood of confusion.

PRACTICAL POINTERS:

Likelihood of confusion (and avoiding it!) is an important factor in selecting a mark.  Not only will the likelihood of confusion impact whether your trademark will be federally registered but it can also be an indicator of risk of an infringement action or lawsuit filed by the registrant (or prior filed application owner).   This is one of the reasons why a trademark search is always recommended.   See our blog post on searches here: /blog/the-benefits-and-advantages-of-a-trademark-search/.

It can be a close call deciding whether trademarks are confusingly similar.  Overcoming a Section 2(d) Office Action can be complicated.  We have extensive experience in addressing office actions and dealing with likelihood of confusion refusals.  We would be happy to schedule a free 15-minute consultation to discuss your options.  Please use the contact form on our website if you need further assistance.