The "Likelihood of Confusion" Test
Reasons a Trademark Application May Get Rejected: "Likelihood of Confusion"
There are several common grounds used by the U.S. Patent and Trademark Office (USPTO) to refuse to register a trademark. Among the most common is the "likelihood of confusion" with another registered trademark. This is a legal basis that the USPTO may use to refuse registration of your trademark or service mark because it is likely to conflict with a mark or marks already registered or pending before the USPTO.
After a trademark application is filed, the assigned USPTO examining attorney will search the records to determine if such a conflict exists between the mark in the application and another mark that is registered or pending before the USPTO. The USPTO will not conduct any preliminary searches for conflicting marks before an applicant files an application and cannot provide legal advice on whether a particular mark can be registered.
Below you will find a discussion of the principal factors considered by USPTO examining attorney and where you can go for legal help with a rejected trademark application. For more information, visit FindLaws' Intellectual Property section.
The principal factors considered by the examining attorney in determining whether there is a likelihood of confusion are:
- the similarity of the marks; and
- the commercial relationship between the goods and/or services listed in the application.
To find a conflict, the marks do not have to be identical, and the goods and/or services do not have to be the same. To be clear, your trademark does not need to be exactly the same as a registered mark. The query falls on whether a reasonable person would be confused by the existence of two similar marks.
It may be enough that the marks are similar and the goods and/or services related. If a conflict exists between your mark and a registered mark, the examining attorney will refuse registration on the ground of likelihood of confusion.
If a conflict exists between your mark and a mark in a pending application that was filed before your application, the examining attorney will notify you of the potential conflict and possibly suspend action on your application. If the earlier-filed application registers, the examining attorney will refuse registration of your mark on the ground of likelihood of confusion.
Getting Legal Help With a Rejected Trademark Application
If you have gone through the lengthy process of attempting to register your trademark, you should first take the time to see if it has a reasonable chance of succeeding. A great first step is consulting with a business and commercial law attorney who specializes in trademark matters. Many attorneys can help you search all the databases that you will need to if you are going to avoid having a conflict with another mark. Before you invest the money in federal registration, find out the law and the facts.