Everything You Need to Know About a “Likelihood of Confusion” Rejection

If you have filed a trademark application, there is a chance the United States Patent and Trademark Office (USPTO) may deny your application based on a prior registered trademark. This is called a “likelihood of confusion” rejection under Section 2(d) of the Lanham Act, the United States trademark law. This can be extremely frustrating and confusing, but this article will assist you in analyzing your Office Action to get a better idea of the best way to move forward.

A rejection due to likelihood of confusion with an existing registered mark (or prior filed application) is perhaps the most difficult rejection to overcome. A trademark Examiner will reject an application if he or she concludes that the applicant’s mark, used on or in connection with the specified goods or services, resembles a registered mark that will likely cause confusion to the general consumer public. The examining attorney will conduct a search in the USPTO database to determine whether the applicant’s mark resembles any registered mark(s) as to the likelihood of causing confusion or mistake when used on or in connection with the goods or services identified in the application. The examining attorney also searches pending applications for conflicting marks with earlier effective filing dates which is why filing as early as possible is always recommended.

The likelihood of confusion question asks not whether people will confuse the marks, but whether the marks will confuse people into believing that the goods and services they identify come from the same source.  The following two factors tend to get the most discussion:  similarity of the marks, and similarity of the goods and services.

Similarity of the Marks

The first, and often the most important, factor is the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression. Slight changes in marks are unlikely to be sufficient to avoid likelihood of confusion.  The marks must convey different impressions to an average consumer. Similarity of the marks in one respect (sight, sound, or meaning) will not automatically result in a determination that confusion is likely even if the goods are identical or closely related. Marks in the past that were found to be too similar were:

• Platinum Puff vs Platinum Plus – Found to be too similar 

• Miltron vs Milltronics – Found to be too similar in appearance

• Seycos vs Seiko – Found to be to similar in sound

• Mr. Clean vs Mr. Rust - Found to be too similar in meaning

While the above marks are NOT identical, the courts found them similar enough to cause confusion for average consumers. Think about brands you are only mildly familiar with; ones you don't see every day. This can be difficult for the average consumer, and even from one Examiner to the next.

Similarity of the Goods and Services

The second important factor to consider is the similarity or dissimilarity of the nature of the goods or services claimed by the marks.  The more similar the marks at issue, the less alike the goods or services need to be to support a finding of likelihood of confusion. 

Identical marks can coexist so long as they are related to sufficiently different goods or services.  For example, “DELTA” is registered for different companies that include air travel services, plumbing fixtures, and metal detectors (among other things).  Broader descriptions of goods and services in an application will provide more protection to the applicant if granted but are at greater risk for rejection under this factor.  As with similarity of the marks, there are no bright line rules to help applicants. 

Other Factors

Of course, there are many other factors that the USPTO would consider, in addition to any other evidence that may be relevant to the ultimate question of whether the two marks are likely to be confused.  Some of these other factors are:

• Strength of the Registered Senior Mark - A senior trademark is the one registered or used first. The more distinctive the mark is, the more protected it is.

• Evidence of actual confusion - If a company can show that there has been actual confusion, this is a very strong argument. This proof is direct evidence that the products and marks have enough similarities to create confusion among consumers.

• Marketing Channels Used - Evidence for this factor can be the market that the two products are sold in, the type of business the marks are used for and the way that the products are advertised.

• The Degree of Purchaser Care - This factor applies to the standard of a typical buyer exercising ordinary caution. If the standard buyer for the products in question is more sophisticated with respect to the purchaser, then a higher standard is proper. If the product is expensive or unusual, then the buyer is seen as exercising greater care in his or her purchase.

• The Intent of the Applicant in Selecting the Mark - If it is clear that the infringing party chose their mark to intentionally cause confusion, then this may be sufficient to prove the likelihood of confusion. Purposeful copying shows that the infringer knew that their mark would divert some business away from the senior mark user.

Overcoming a Rejection Based on Likelihood of Confusion

For trademark applications that are risky, it is impossible to predict whether an Examiner will find a likelihood of confusion between any two marks. One of the most effective ways to avoid the likelihood of filing a high-risk application is to get a trademark professional to help you prepare an application with the best chances of success.

If the USPTO determines that a conflict exists between the applicant's mark and a registered mark, it will refuse registration and issue an Office Action explaining why registration was denied. If a conflict exists between the applicant's mark and an earlier filed application, the USPTO will notify the applicant of the potential conflict and suspend action on the application pending resolution of the application filed earlier.

Once an Office Action has been issued, the applicant has six months to respond. Possible methods to overcome a refusal based on likeliness of confusion include submitting evidence that no likelihood of confusion exists. For example, an applicant may argue that although the marks are similar or identical, the mark in the application is in an industry distinct enough from the original mark that it will not cause confusion.

Although the applicant has an opportunity to scrutinize the USPTO Examiner's evidence and respond, any doubt on the issue of likelihood of confusion is resolved in favor of the senior mark. Since the law under the Lanham Act and USPTO practice can limit the arguments applicants can raise in their response to these types of Office Actions, it is important to select a mark that is distinctive and within the general requirements under the Lanham Act.

Disclaimer:  This website is not intended to offer legal advice or to be a substitute for a consultation on a case by case basis with an attorney.  The information provided above is meant for informational purposes only and may be subject to change. 

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