According to the United States Patent and Trademark Office (USPTO) for a trademark to be registered, it needs to be noticeably different and not likely to be confused with a registered or pending mark. Unfortunately, if an application is submitted, and the examining lawyer finds it too similar, the lawyer may refuse the application and will not register the trademark because of the likelihood of confusion. Thankfully, there are actions that can be taken to overcome the likelihood of confusion rejection. However, due to the complex process involved in overturning this refusal, you may want to consider speaking with an experienced trademark attorney about your case.
At Polymath Legal PC, our legal professionals are ready to help you through this challenging legal ordeal and fight for the results and outcome you need. Contact us today for more information regarding our services and the legal options you can pursue regarding your intellectual property at (833) 931-6418.
What Does “Confusingly Similar” Mean?
When trademarks are so similar that consumers would believe that they came from the same source, it is likely that a reviewing attorney at the USPTO would consider these marks to be confusingly similar.
Yet, while there is no specific test for determining the likelihood of this confusion, each application is reviewed by a lawyer and decided on the facts. For instance, one of the first things the lawyer will examine is the similarities and differences between trademarks. More importantly, these marks do not need to be identical to be rejected based on the likelihood of confusion. In fact, there are several factors, known as the “DuPont factors,” that are used to determine the similarity of the marks.
What Are the DuPont Factors?
The DuPont factors are also known as the “likelihood of confusion” factors and are used by the United States Patent and Trademark Office to figure out if a trademark is too similar to a pending or previously submitted trademark.
These factors review:
- The similarity between the mark’s sound, appearance, commercial impression, and connotation.
- The similarity of the services or goods described in the application to other marks in use.
- The conditions of how the services or products are bought.
- The similarity in the established trade channels.
- The nature of the confusion.
- The nature and number of marks that are similar.
- The previous mark’s fame, which is based on the type of advertising, length of use, and sales.
- The potential for the market interfering.
- The extent of possible confusion.
- The types of goods for which the mark is used.
- The applicant’s ability to exclude others from the use of the mark.
- The time and length of concurrent use without evidence of actual confusion.
- Any other established facts.
Although these factors are examined as a whole, and each factor is weighed uniquely, some of these factors hold more significance than others, such as if the trademarks look similar, create the same general commercial impression, or sound alike when spoken. With these specific factors, there is a greater likelihood that the reviewing officer may find the trademarks confusingly similar.
What is the Dominant Portion of a Trademark?
When reviewing whether there is a likelihood of confusion between trademarks, it is essential to consider whether a portion of the trademark is dominant in creating the trademark’s commercial impression.
The dominant portion of the trademark usually refers to the suggestive or the arbitrary portion of the mark and not the descriptive or generic portion. However, the first words of the mark, when it has multiple words, may also be regarded as dominant. This is because examiners tend to find that consumers are more inclined to focus on the first word of a trademark than the rest of it. As a result, the dominant portion will have more protections, while the weaker terms will only be entitled to a narrow scope of this protection.
Overcome a Rejection Based on the Likelihood of Confusion
If a reviewing attorney determines that a conflict exists between a registered or pending mark and the applicant’s mark, they will likely refuse to register the trademark and issue an explanation why the trademark was denied in the office action.
After this letter has been issued, an applicant will only have six months to respond to the denial. Thankfully, getting an office action does not mean that all hope is lost when it comes to a trademark or that the applicant has run out of options. Rather, it just means that they will have to produce solid and convincing arguments and relevant evidence to overcome the likelihood of confusion rejection.
For example, some methods that can be used to overcome this refusal include:
- Presenting evidence that shows there is no likelihood of confusion, such as documentation indicating that while the marks are similar, the marks are in such different industries that there will be no confusion regarding the trademarks
- Showing that the confusion only relates to generic phrases or terms
- Providing a consent agreement with the owner of the registered or pending mark establishing that the applicant can proceed with their trademark
While overcoming the denial may seem relatively straightforward, in practice, it is a much more complicated process. If you face a rejection based on the likelihood of confusion, consider reaching out to a seasoned trademark lawyer as soon as possible. At Polymath Legal PC, our experienced and dedicated intellectual property lawyers can help you prepare strong arguments possible to overcome this rejection and help you get the approval you need.
Contact an Experienced Trademark Attorney and Find Out How They Can Help with the Trademark Process
If your trademark has been denied and you need help to overcome the likelihood of confusion rejection, then contact Polymath Legal PC today by calling our firm at (833) 931-6418 to learn more about your legal rights.
We can review your application or your office action letter and discuss your possible legal options and our plan for how we can try to overcome your likelihood of confusion rejection.