Overcoming A Rejection Based On Likelihood Of Confusion

The U.S. Patent and Trademark Office ("USPTO") may refuse to register an applicant's mark for several reasons. One possible basis for refusal is a rejection based on likelihood of confusion.

1. Likelihood of Confusion

USPTO Examiners examine each application for federal trademark registration to determine whether it complies with the requirements for trademark registration. One of the requirements is that the proposed mark must not conflict or pose a likelihood of confusion with any prior mark.

Likelihood of confusion exists between trademarks when the marks are so similar and the goods and/or services for which they are used are so related that they cause consumers to mistakenly believe some sponsorship, endorsement or affiliation exists between the owners of the two marks. Section 2(d) Lanham Act.

The analysis for likelihood of confusion has two main prongs. If a prior mark is found during the Examiner's search for registered trademarks, the Examiner will compare the prior mark and the mark under consideration to determine: (1) whether the marks are confusingly similar, and (2) whether the marks are used for related or similar goods or services. The Examiner will only refuse registration under Section 2(d) of the Lanham Act if both of these requirements are met.

In addition to the similarity of the marks and relatedness of the goods or services, the Examiner can consider the other factors discussed in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357,177 (C.C.P.A. 1973). The additional du Pont factors include: (1) the similarity of established trade channels, (2) the number and nature of similar marks used on similar goods, (3) the types of buyers the sales are targeted to and conditions the goods are sold, and (4) whether there is a valid consent agreement between the owner of the registered mark and applicant. However, the Examiner can only consider these additional factors if relevant evidence is contained in the record.

  1. Similarity of Marks
    In determining whether two marks are confusingly similar, the USPTO Examiner will not merely consider whether the marks are identical, but also whether the marks sound similar, have a similar appearance, and/or include an identical design element that creates a similar commercial impression. For example, the USPTO would consider T.MARKEY and TEE MARQEE to be similar marks.

  2. Relatedness of Goods or Services
    In addition to being confusingly similar, the marks must be used for related goods and/or services in order to establish a prima facie rejection based on a likelihood of confusion. The USPTO Examiner considers the commercial relationship between the goods or services identified in the pre-existing registration or application to determine whether the goods or services are related.

There is no requirement that the proposed mark and the registered mark be identical. Rather, it is sufficient that they are related in a way that consumers are likely to believe they came from a common source, specifically whether there is a likelihood of confusion as to the source of the goods or services. For example, dresses and other clothing items will generally be considered related under the general clothing category.

2. Overcoming a Rejection Based on Likelihood of Confusion

If the USPTO determines that both requirements are met and concludes 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. Further, since trademarks apply only to non-generic words and phrases, an applicant can show that the potentially confusing aspects of their mark consist of generic terms or phrases. The applicant may also submit a consent agreement between the applicant and the owner of the registered mark.

A consent agreement is an agreement between the owner of a prior registered mark and the applicant where the prior registrant allows the applicant to use and/or register their same or similar mark. When an applicant submits a consent agreement in response to an Office Action, the Examiner will consider the agreement in conjunction with the other du Pont factors to determine whether likelihood of confusion exists.

Although the applicant has an opportunity to scrutinize the USPTO Examiner's evidence and respond, any doubts on the issue of likelihood of confusion are resolved in favor of prior registrant. Since the law under Section 2(d) of the Lanham Act and USPTO practice can limit the arguments applicants can raise in their response, it is important to select a mark with the general requirements under Section 2(d) in mind.

If you are facing a likelihood of confusion rejection and need assistance in overcoming the rejection, call the Law Offices of Roland Tong, at 949-298-6867 or email Mr. Tong at roland@rtlawoffices.com. Mr. Tong has been obtaining trademark registrations for his clients since 2001. He has represented a wide range of clients from start-up companies to Fortune 500 companies, some of whom have over a hundred trademark applications and registrations in the US and worldwide.