By Taylar-Simone McCants, J.D. | Legally reviewed by Amber Sheppard, Esq. | Last reviewed October 22, 2023
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There are several common reasons the U.S. Patent and Trademark Office (USPTO) refuses to register a trademark. Among the most common is the likelihood of confusion with another registered trademark. The USPTO can do this because your mark may conflict with an existing trademark or a pending trademark application filed before yours.
Before paying your nonrefundable filing fees to the USPTO, determine if your proposed trademark will pass the "likelihood of confusion" test below.
This is a legal basis that the USPTO may use to refuse registration of your trademark. The USPTO trademark refusal rationale is to avoid trademark infringement with a similar trademark.
After a trademark application is filed, the assigned USPTO examining attorney will search the records. They will determine if a conflict exists between the mark in the application and another mark. The other mark must be already registered or pending before the USPTO.
The examining attorneys with the USPTO use two principal factors in considering granting a trademark or service mark.
The two principal factors in determining whether there is a likelihood of confusion are:
The initial test here is whether, by name alone, a consumer would confuse it with an existing mark. The marks do not have to be identical to find a conflict. Your trademark does not need to be identical to the currently registered mark. The issue falls on whether a reasonable person would be confused by the existence of two similar marks.
Here are some examples:
When you file a trademark application, you must specify a classification of goods or services. This is sometimes called the trademark class.
Similar to the mark, the goods and services do not have to be the same for an examining attorney to reject it. It may be enough that the marks are similar and the goods and services related.
Here are some examples:
Suppose a conflict exists between your mark and a mark in a pending application filed before your application. In that case, the examining attorney will notify you of the potential conflict. At that point, you can amend your application or provide specimens in support of your mark.
Another option the examining attorney may take is to suspend action on your application until they decide on the other application.
If the examiner grants the earlier filed application registration, the examining attorney will reject yours. The USPTO will refuse registration of your mark because of the likelihood of confusion.
Suppose a conflict exists between your mark and a registered mark. In that case, the examining attorney will refuse registration under the likelihood of confusion test. You can file an appeal. An appeal requires an additional fee and an appeal brief. You can request an oral hearing in front of an appeal board.
Following are answers to some common questions about the confusion test and trademark law.
The USPTO examining attorney will review social media and conduct an internet search during your application process. Social media impacts the likelihood of confusion tests due to today's business landscape. Many startup companies create social media pages to market their company. Social media pages are often made before thinking about becoming a trademark owner. Businesses should be careful of potential trademark infringement of existing marks.
A trademark owner has common law rights in a mark used in commerce without registering it. However, there are substantial reasons why an entrepreneur should register their trademark nationally. A federally registered trademark with the USPTO provides nationwide protection.
It gives exclusive rights to the trademark owner to:
You should consider the likelihood of confusion test when you are selecting a:
Ensuring that your trademark does not create confusion with an existing federal trademark is crucial. If you do not, you may get a cease and desist letter. This could force your company to rebrand, which is costly.
The USPTO will not conduct preliminary searches for conflicting marks before an applicant files an application. The USPTO cannot provide legal advice on whether a particular mark can be registered.
An office action is an official written communication from the USPTO to the trademark applicant. An office action may address:
TEAS stands for Trademark Electronic Application System. TEAS is an online platform the USPTO provides that allows applicants to manage their trademark applications electronically.
A service mark is a type of intellectual property protection that identifies a business's services. Service marks are similar to trademarks, but they apply only to services.
Before you go through the trademark registration process, you should do some research. A significant first step is consulting with a trademark lawyer. Many attorneys can help you conduct a trademark search in trademark databases. Before investing money in trademark protection, find out the law and the facts. An intellectual property lawyer can give you legal help with a trademark rejection. For more information, visit FindLaw's' Intellectual Property section.
Contact a qualified business attorney to help you identify how to best protect your business' intellectual property.
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