Trademark Refusals Under the Lanham Act

Likelihood of confusion for purposes of trademark registration the same standard as likelihood of confusion for trademark infringement.  Below is a summary of some of the many factors considered in determining registrability of a trademark under the Lanham Act.

Under the Lanham Act, 15 U.S.C.A. § 1052, “No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it: … (d) consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark office or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive.”

To bar registration under the Lanham Act, the same “likelihood of confusion” test as in determining trademark infringement is applied.  What matters for likelihood of confusion is that the purchasing public would mistakenly assume the trademark applicant’s goods or services originate with, are sponsored by, or are in some way associated with the goods sold under a cited registration or trademark.  According to the Trademark Board, any confusion made likely by a junior user’s mark is cause for refusal, because likelihood of confusion encompasses confusion of sponsorship, affiliation or connection.  Hilson Research, Inc. v. Society for Human Resource Management, 27 U.S.P.Q.2d 1423, 1993 WL 290669 (T.T.A.B. 1993).

When determining whether a mark should be registered, the actual specimens of the applicant’s use of the mark are often compared to allegedly similar marks.  Since the Lanham Act (Section 2(d)) bars the registration of marks which resemble registered marks, any registered mark can bar registration under Section 2(d).

Other Considerations Under Section 2(d) for and Against Registrability of a Trademark

Unsupported assertions by the applicant of no confusion or that confusion is unlikely will be given little evidentiary value.  In re Majestic Distilling Co. Inc., 315 F.3d 1311, 65 U.S.P.!.2d 1201 (Fed. Cir. 2003)  Similarly, arguing contemporaneous use (even for several years) without actual confusion, is given little weight by the USPTO.  In re Cook Medical Technologies, 105 U.S.P.Q.2d 1377, 1384, 2012 WL 6967733 (T.T.A.B. 2012).  An applicant cannot argue to the examiner that there is no likelihood of confusion simply because there has been no objection to the applicant’s use.  However, evidence that the owner of a mark does not believe there will be likelihood of confusion is relevant in determining registrability, as is an owner giving definitive consent.

Geographical area of use of the applicant versus that of the registered mark (territorial separation) is also irrelevant in determining likelihood  of confusion.  Additionally, the size of an applicant or prior registrant is not relevant—in other words, a large company cannot register just because a prior registrant is small.

If prior registration is cited by the USPTO Examining Attorney as being confusingly similar, there is no further obligation to prove strength or fame of the trademark, as the degree of strength or fame is considered a neutral factor.

In the 1973 Du Pont Court decision, the court recognized no “litmus rule” for the Lanham Act likelihood of confusion determination, but stated that when possible, the following 13 factors should be considered:

• The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression;

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

The similarity or dissimilarity of established, likely- to-continue trade channels. Restriction of channels can avoid a § 2(d) conflict. Where the identification of goods is restricted to certain narrow channels of trade, it can avoid a finding of a likelihood of confusion with a registration for a similar mark for related goods;

• The conditions under which and buyers to whom sales are made, i.e., “impulse” vs. careful, sophisticated purchasing;
• The fame of the prior mark (sales, advertising, length of use);
• The number and nature of similar marks in use on similar goods;
• The nature and extent of any actual confusion;
• The length of time during and conditions under which there has been concurrent use without evidence of actual confusion;
• The variety of goods on which a mark is or is not used (house mark, “family” mark, product mark);
• The market interface between applicant and the owner of a prior mark: (a) a mere “consent” to register or use, (b) agreement provisions designed to preclude confusion, i.e., limitations on continued use of the marks by each party, (c) assignment of mark, application, registration and good will of the related business, or (d) laches and estoppel attributable to the owner of the prior mark and indicative of lack of confusion;
• The extent to which the applicant has a right to exclude others from use of its mark on its goods;
• The extent of potential confusion, i.e., whether de minimis or substantial; and
• Any other established fact probative of the effect of use. The CCPA emphasized that almost any evidence bearing on likelihood of confusion is admissible. The only issue will be the weight to be accorded the evidence. The CCPA disclaimed its prior statements that the Patent Office acts as a “guardian of the public interest” in refusing registration under § 2(d), noting that refusal to register cannot prevent the applicant’s further use of the mark with attendant confusion of the public. See I. Du Pont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563 (C.C.P.A. 1973).

Obviously, not all of the above factors will be relevant in every case, and only those that are relevant will should be considered.