A trademark helps customers recognize your goods and services without risking confusion with a competitor’s products. If your trademark is too similar to another mark, consumers may be uncertain about the source of the products and think it belongs to another company.
The United States Patent and Trademark Office (USPTO) will refuse to register a mark if it has too high a likelihood of confusion with a pre-existing mark. If you have received a likelihood of confusion rejection from the USPTO, a trademark registration attorney could help you file a response and overcome this action.
The USPTO may refuse to register a proposed mark on several grounds, but likelihood of confusion is a common offender. When a trademark application is filed, the USPTO will conduct a search for any potentially conflicting marks that are already registered or are currently pending registration.
The USPTO often uses what are known as the DuPont factors, originating from a 1973 case called E.I. DuPont de Nemours & Co. v. Celanese Corp., to determine approvals or denials of trademark registration applications. Courts also use the DuPont factors when deciding cases involving similar marks. When comparing two marks for likelihood of confusion, these criteria include:
The proposed trademark and the existing trademark do not have to be exactly the same for the USPTO to issue a confusingly similar rejection. If the mark is similar, and the goods or services in question are related to the point that consumers may mistake them as coming from the same source, a rejection is extremely likely.
A proposed trademark can be similar with an existing or pending mark in numerous ways that would lead to a rejection. For example, the marks could be similar in the way they sound when spoken out loud, in visual appearance, or have an almost identical or interchangeable meaning.
If you receive a likelihood of confusion rejecting from an examining attorney at the USPTO, you have a limited time frame to respond and overcome this hurdle. An intellectual property attorney can help you understand and pursue your best legal options.
These can include requesting a suspension of your trademark application, amending your application, restricting products or services from your trademark application, or filing a petition for reexamination against the cited registration. In some cases, it may be a viable option to initiate a trademark cancellation proceeding before the Trademark Trial and Appeal Board, or to submit evidence and legal arguments against the rejection.
You need a skilled attorney by your side who is deeply familiar with these legal procedures, documentation, and the most effective strategies to safeguard your brand. In some cases, it may be possible to pursue an agreement with the owner of the cited registration to allow use and registration of both marks without infringement.
Whether you have already filed your trademark registration application, are in the process of preparing one, or have received a confusingly similar rejection, Lomnitzer Law can provide invaluable assistance. We can help you avoid potential rejections, oppositions, or other potentially costly proceedings by confirming your mark is unique from the start.
From conducting a thorough trademark search to look for similar marks, to crafting an identification of goods and services that minimizes overlap with existing marks, a lawyer can help you get it right the first time around. Contact us today about your trademark registration case and secure the legal assistance you need to protect your business.
