likelihood of confusion

Disputing Likelihood of Confusion

Showing that there is no likelihood of confusion for a trademark application cited with this issues is not easy, but not impossible. This is generally the first way to dispute likelihood of confusion, but there are other affirmative defenses which can be used. To show there is no confusion it is important to emphasize all the differences in the trademarks, goods, potential customers, and where the goods or services will be sold. Even minor differences should be used as many little differences can add up to a strong argument. This can mean things like color, text, packaging, nature of goods, advertising, quality, price, etc. Another thing that can be looked at is whether there are third parties using trademarks that may also be considered similar. If this is the case, then it may be possible to argue the public is aware of such similar marks and has the ability to distinguish between them. Based on this it may also be possible to show that the registered trademark is weak or has a significant meaning in the industry. It is of course best to avoid likelihood of confusion altogether by carefully searching and crafting your application prior to filing, but it is possible to obtain registration by showing there is no likelihood of confusion.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

Reverse Confusion

One possible outcome of a likelihood of confusion fight is reverse confusion. Reverse confusion is when the infringing newer trademark is more well-known than the senior trademark. This can happen if the younger mark was the subject of an advertising campaign and potential customers are more likely to recognize it than the older mark. This finding can of course be detrimental for the owner of the older mark as consumers may pass when purchasing their goods because they think the older mark is the infringer. Reverse confusion may also be bad for the younger mark if it is found that they used or advertised the new mark with disregard for the older mark’s status. This bad faith move can result in damages. Reverse confusion can add complications and risks for both sides. Like regular likelihood of confusion, it is best avoided through careful searching and selection of a trademark prior to filing.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

Purchaser Sophistication

One factor that is taken into account when determining likelihood of confusion is how sophisticated and knowledgeable the customers purchasing your goods or services are. The more sophisticated they are the less likely they would be to confuse conflicting trademarks. This is something that should be considered as you begin your new trademark application. If you are selling goods or services to professionals rather than the general public the sophistication may be considered high. If you are only selling to the general public, then it may be low. Ordinary purchasers are less likely to have as much specific knowledge in regards to what they are purchasing and a professional is more likely to discriminate between trademarks. The amount of attention a potential purchaser will pay when considering. Will they think about the various products available or just grab what they see first? Is this in an impulse purchase or would it involve careful consideration? These are all important questions when analyzing a conflicting mark this is for similar goods and services.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

Proximity of the goods to a conflicting mark

When determining whether or not your trademark is likely to be confused with a possibly conflicting mark one of the most important thing to look at is if the goods are related. The closer the goods are to each other the higher the chance of likelihood of confusion being raised by the examiner. An important question is would an average person purchasing these goods be likely to think these items came from the same source? This question is tough because in today’s society the average consumer would expect companies to make a plethora of goods even if they are seemingly unrelated. Factors that should be taken into account include the place where the products are sold, price, whether the goods can be used together, and even the possible dangerous consequences of confusion such as in the case for medicine. If your goods or services are similar or closely related to those of a conflicting mark, then you may want to consider an alternative name.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

Is my trademark similar to another?

Figuring out whether or not your trademark is similar to another is not as easy as one might think, but it is very important to consider before attempting to gain registration. Taking your trademark and looking at it side-by-side with another will not answer this question because more than just appearance is taken into account. Sound and meaning are also very important aspects. In addition, it is important to remember that trademarks will be judged as a whole and not by their individual components. Other things to take into account are the market place your product will be sold in and whether or not your goods are similar to those of the other trademark. When judging marks for similarity remember that those purchasing your products will not have perfect memory of the trademarks and thus more prone to be confused than you. Certain similarities may be acceptable such as if the mark is overall weak or the similarities have to do with generic portions which have been disclaimed. In certain cases, packaging or some other form of distinct presentation may make a difference, but not always.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

One very common trademark application issue is likelihood of confusion with another registered or pending trademark. Depending on the specifics of the cited mark or marks, an Office Action containing likelihood of confusion can be a major obstacle in the way of registration. The main thing the examiner will look at is whether a consumer is likely to confuse or mistake your trademark for another. In determining this the examiner will look at the text, logo, appearance, sound, and entirety of your mark’s commercial impression. It is important to note that such confusion must be probable, not just possible. Other factors that play a part in determining likelihood of confusion include the strength and distinctiveness of the cited mark, relation of goods/services, consumer sophistication, third-party use, quality of goods, advertising and sales, and other relevant evidence. There are other options to deal with likelihood of confusion such as negotiating a co-existence agreement with the owner of the cited mark. Likelihood of confusion is one of the tougher issues to deal with and at the end of the day it all may come down to examiner’s opinion. Before fighting it is important to consider all possibilities and outcomes.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

Letters of protest

A letter or protest is a filing made by a third party against a proposed trademark which they believe should not move to registration. These letters are filed with the Director of Trademark Examining Group. This is generally done if a party believes registration will cause likelihood of confusion with one of their existing trademarks or if the proposed trademark is generic. Such a letter has to contain evidence which demonstrates that the protest is valid. If this is filed prior to publication, then a determination will be made as to whether the examining attorney may use it during their considerations. If filed after publication, then a determination will be made as to whether there was an error during examination and if jurisdiction should be restored to the examiner. If you are the one opposing a proposed trademark it is important to file an extension of time to oppose as merely filing a letter of protest will not halt the process. Letters of protest are a great way to protect your trademark, however receiving one for a mark you are attempting to register can cause difficulties and delays.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.