Tips on How to Use Trademark Searching to Help Avoid  A Likelihood of Confusion Refusal On Your USPTO Trademark Application


Many Facts and Factors

There are many facts and factors to consider when deciding if one trademark is too similar to another mark with appearance, sound connotation and commercial impression often being the most important factors.

USPTO Trademark Examining Attorneys often refuse to register an applicant's mark under Section 2(d) of the Trademark Act of 1946, 15 U.S.C. § 1052(d), on the ground that applicant's mark is likely to cause confusion with the previously registered or pending mark. This is also known as a likelihood of confusion refusal. Other conflicts that cause refusals are based on the likelihood of mistake or deception. (Refusals for being merely descriptive are also very common.)


Seventy Percent of Trademark Applications Get Initially Refused!!

Likelihood of confusion is the most common refusal for trademarks or service marks. Approximately 70% of USPTO trademarks are initially refused registration for one or more reasons (see List of Reasons Why Tradeark Are Refused). ( Thirty percent of all TEAS PLUS applications proceed directly to publication without an office action. See USPTO Trademark Notice)

There is no mechanical test for determining likelihood of confusion meaning that the typical search engine mechanical tests for direct hits and minor misspellings or plurals do not test all the necessary similarity factors. Many legal principles are involved including distinctiveness and distinctive elements; there are many kinds of similarity, similarity can be more than just appearance; whether a mark is strong or weak; are the goods or services related; whether or not a mark has a pseudo mark; similarity and dissimilarity of the marks and others. A likelihood of confusion determination under Section 2(d) is based on an analysis of all of the probative facts in evidence that are relevant to the DuPont factors bearing on the likelihood of confusion issue.


The Thirteen DuPont Factors

 In re E.I. DuPont DeNemours & Co., 476 F.2d 1357, 1361 (CCPA 1973), established a test that the USPTO trademark examiners & TTAB (Trademark Trial and Appeal Board) use for determining whether there is a likelihood of confusion between two trademarks:


In testing for likelihood of confusion . . . the following, when of record, must be considered:

(1) The similarity or dissimilarity of the marks in their entireties as to appearance, sound connotation and commercial impression.

(2) The similarity or dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use.

(3) The similarity or dissimilarity of established, likely-to-continue trade channels.

(4) The conditions under which and buyers to whom sales are made, i.e. `impulse' vs. careful, sophisticated purchasing.

(5) The fame of the prior mark (sales, advertising, length of use).

(6) The number and nature of similar marks in use on similar goods.

(7) The nature and extent of any actual confusion.

(8) The length of time during and conditions under which there has been concurrent use without evidence of actual confusion.

(9) The variety of goods on which a mark is or is not used (house mark, `family' mark, product mark).

(10) The market interface between applicant and the owner of a prior mark. . . .

(11) The extent to which applicant has a right to exclude others from use of its mark on its goods.

(12) The extent of potential confusion, i.e., whether de minimis or substantial.

(13) Any other established fact probative of the effect of use.


What If Someone Else Has Recently Applied for or Registered a Trademark  But You Are the Prior User (first user)?

The general rule of thumb is that a prior user has superior rights in trademark law but you can’t just call up the USPTO and tell them to let yours register and cancel theirs. Sitting on your rights for a long period of time may mean that you no longer have rights that can be enforced. There are lots of other facts that are important also.

Defending your superior rights in a trademark application or registration can be accomplished through a trademark opposition or trademark cancellation proceeding in which the USPTO Trademark Trial and Appeal Board (TTAB) hears cases involving trademark applications and registrations. (The TTAB cannot decide issues of infringement, only registerability.)

Being the first to file is the superior position to be in so investing in an application for a trademark early in its use or even before its first use can avoid a lot of problems later. If you are the second to file but the first to file made serious mistakes in the their application (70% of trademark applications are refused at least once!), you may just have to wait for the first application to go abandoned (about 40-50% of trademark applications never register). Making sure that your later filed application will hold up to not just the trademark application examination process but also stand up to the opposition process or cancellation process is essential to claiming your superior rights. Knowing how to win the opposition when you fill out the application makes good sense (AIM HIGHER!)

 


Five Step Verification by Not Just Patents® Legal Services

Can Your Trademark Stand Up?

Stand-Up Trademark: A registration that protects legal rights and sets the ground work for a strong trademark registration protects investments in a product or service that can last through a long product life.

Fall-Down Trademark: A registration that only meets minimum requirements for filing (all the right blanks filled in and no direct search hits) may not ever issue or may not protect legal rights. The abandonment rate of trademark applications at the USPTO (trademarks that did not issue) is very high, there were 139,832 abandoned trademarks in 2012 (about 37%). Many applications do not meet federal trademark law because they have a likelihood of confusion with other registered or pending marks, are merely descriptive or generic, have specimens that do not show the trademark functioning as a trademark, have inadequate specimens of use and many other reasons. Many abandonments are from intent-to-use applications where the Alleged Amendment of Use (AAU) or the Statement of Use (SOU) were never filed with the USPTO or were not accepted (problems with specimens).   Getting a trademark registration does not have to be a gambling process.

Verify Strength to Stand Up: To verify a potential trademark is strong, available to use, and ready to register, Not Just Patents® Legal Services does  much more than a direct hit federal search. To maximize the commercial strength and minimize the weaknesses of a trademark, Not Just Patents recommends our service and starts the road to a Stand-Up Trademark with our Five-Step Verification process:


1. Verify Inherent Strength

Does the mark consist of inherently distinctive element(s) that can be claimed for exclusive use?

2. Verify Right to Use

Does the mark have a likelihood of confusion with prior marks (registered or unregistered)?

3. Verify Right to Register

Does the mark meet the USPTO rules of registration? (no grounds for refusal)

4. Verify Specimen

Is the mark used as a trademark or service mark in the specimen?

5. Verify Goods and Services ID

Is the goods/services identification definite and accurate? Is the goods/service ID as broad as it should be under the circumstances or will a narrower description distinguish it better or avoid a likelihood of confusion?


How Can I Verify That I Have A Strong Trademark?

There are many different definitions for verifying a trademark. Some believe that it involves a mechanical quick search of USPTO records to look for direct hits. Some would expand the mechanical USPTO search to look for some ‘similar’ trademarks. Some would expand the search to include common law trademarks. If a trademark owner is just trying to spend little and get little, these may be enough to satisfy the “get little” goal. If a trademark owner is trying to maximize the value of their investment and minimize the weaknesses, A Strong Trademark Registration may be a better choice.

 “A strong trademark is one that is rarely used by parties other than the owner of the trademark, while a weak trademark is one that is often used by other parties. The more distinctive a trademark, the greater its strength.” Exxon Corporation v. Texas Motor Exchange of Houston, 628 F.2d 500, 504 (5th Cir.1980).

*The Most Efficient Commercial Tool Ever Devised: The International Trademark Association (INTA) in their Top Ten Reasons Why You Should Care About Trademarks calls a Trademark the Most Efficient Commercial Tool Ever Devised. A weak trademark is made up of words or symbols that others have a right to use so any one user has no exclusive rights to use.

*The USPTO helps to enforce  prior strong trademarks during the application of later-filed marks. A trademark examiner will refuse registration for later applying marks that have a likelihood of confusion with a prior registered mark or a prior pending trademark. A registered mark on the Principal Register has a presumption of distinctiveness or inherent distinctiveness. Even a mark on the Supplemental Register can be used to refuse a later-filed mark on the Principal Register. Being first to register has its privileges!


Aim Higher®

Facts Matter

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