Overview of Likelihood of Confusion Refusals

Understanding Likelihood Of Confusion Trademark Refusals

The concept of “likelihood of confusion” as provided under Section 2(d) of the Lanham Act stands as a cornerstone in the decision-making process of the United States Patent & Trademark Office (USPTO). The Lanham Act stipulates that no trademark, intended to distinguish the goods of the applicant from those of others, shall be refused registration on the Principal Register on account of its nature unless it bears significant resemblance to a previously registered mark or a mark or trade name previously used but not abandoned in the United States. This resemblance should be so pronounced that when the applicant’s mark is used on or in connection with their goods or services, it is likely to cause confusion, mistake, or deceive the consumers regarding the origin or association of the goods or services.

This foundational principle is addressed in the Trademark Manual of Examining Procedure (TMEP), which serves as a guiding document for USPTO examining attorneys. The TMEP underscores that the likelihood of confusion is determined by evaluating whether consumers are likely to be misled into believing that the goods or services bearing the applied-for mark and those bearing the registered mark share a common source, origin, affiliation, or sponsorship.

In discerning the likelihood of confusion, several factors, often referred to as the “DuPont factors,” are taken into consideration. These factors encompass the similarity of the trademarks in appearance, sound, connotation, and commercial impression, the relatedness of the goods or services, the channels of trade and classes of purchasers, the number and nature of similar trademarks in use on similar goods, and the existence of actual confusion, among others. The examining attorney conducts a balanced assessment of these factors to conclude whether there is a viable likelihood of confusion between the applied-for trademark and the cited registered trademark.

Moreover, the TMEP instructs examining attorneys to assess not just the trademarks in their entireties but also their individual components, considering the overall impression created by the trademarks. Additionally, the commercial strength or weakness of the trademarks, the conditions under which the goods or services are purchased, and the fame of the prior trademark are scrutinized to make a comprehensive determination.

In conclusion, the likelihood of confusion under the Lanham Act and as detailed in the TMEP represents a multifaceted analysis, grounded in the protection of consumers and the maintenance of clarity in the marketplace. This analysis is crucial in ensuring that trademarks serve their fundamental purpose of signifying the source of goods or services and preventing consumer deception or confusion regarding the origin of the products they purchase.

Likelihood of Confusion Test – 13 DuPont Factors

Under the Trademark Act, the standard applied is the same “likelihood of confusion” rule applicable to the test of trademark infringement.  Likelihood of confusion depends upon whether the purchasing public (generally, the reasonable, average consumer) would mistakenly believe that the applicant’s goods or services originate with, are sponsored by, or are in some way associated with the goods or services sold under a registered trademark.

In the 1973 DuPont decision, the U.S. Court of Customs and Patent Appeals (CCPA) discussed the factors relevant to a determination of likelihood of confusion. Although the weight given to the relevant DuPont factors may vary, the following thirteen factors are key considerations in any likelihood of confusion determination:

  • The similarity or dissimilarity of the trademarks in their entireties as to appearance, sound, connotation and commercial impression (the court looks at the pronunciation of the mark, its appearance, and the verbal translation of the conflicting marks);
  • The similarity or dissimilarity and nature of the goods or services as described in a trademark application or trademark registration in connection with which a prior mark (senior mark) is in use;
  • The similarity or dissimilarity of established, likely-to-continue trade channels.  Restriction of channels to 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 (buyers typically exercise greater caution when purchasing expensive or unusual items);
  • 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 (if a company can show that there has been actual confusion, this is a very strong argument);
  • 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 goodwill of the related business, or (d) laches and estoppel attributable to the owner of the prior mark and indicative 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 the likelihood of confusion is admissible.  The only issue will be the weight to be accorded the evidence.

It is important to note that not all DuPont factors will be relevant to every case.  Only those factors of relevance to each case need to be weighed and considered.  Additionally, in close cases of likelihood of confusion, the senior user of a trademark is entitled to the benefit of the doubt.

What Is the Meaning of Likelihood of Confusion?

As noted above, likelihood of confusion is a pivotal concept in trademark law, addressing the probability of consumers confusing one trademark with another, rather than the mere possibility of such confusion. This distinction underscores the depth of the analysis required to refuse a trademark registration, as a mere hypothetical or possible confusion in the marketplace is insufficient grounds for refusal under Section 2(d) of the Trademark Act. Instead, the examining attorney must establish that confusion is probable were both marks to coexist in the market.

This principle contrasts with actual confusion, which signifies real-life instances where consumers have mistaken one mark for another. Demonstrating actual confusion can be challenging and is not a prerequisite for refusing trademark registration. The focus of the examining attorney is not on identifying tangible instances of confusion but rather on establishing that such confusion is likely to arise given the similarities between the trademarks, the relatedness of the goods or services, and the resemblance in the trade channels of the goods.

Analyzing the likelihood of confusion necessitates a holistic examination of the trademarks in question, considering their appearance, sound, connotation, and overall commercial impression. A finding of similarity in any of these elements may be grounds to deem the trademarks confusingly similar. The evaluation does not hinge on a side-by-side comparison of the trademarks but rather on their overall commercial impression to determine whether confusion regarding the source of the goods offered under the respective trademarks is probable. This approach aligns with the perspective of the average purchaser, who retains a general, rather than a specific, impression of the trademarks and is likely to remember the first word in any composite trademark, particularly when it is the dominant term.

Understanding that the likelihood of confusion means probable confusion, not just a possible one, is vital as it sets the bar for the level of similarity and relatedness that would warrant a refusal to register a trademark. This comprehension ensures that the marketplace remains clear of misleadingly similar trademarks, protecting consumers from deception and preserving the distinctive identity and reputation of existing marks. Balancing the nuanced differences between likelihood and actual confusion reinforces the integrity of the trademark registration process, fostering a fair and orderly commercial environment.

Are The Goods and/or Services Related?

Determining whether the goods and/or services associated with the competing trademarks are related stands as a fundamental criterion, especially when the goods and/or services are not directly competitive. The crux of this analysis lies in discerning whether consumers are likely to perceive goods and/or services, which are marked similarly, as originating from the same company, or as being connected with, or sponsored by, a common entity. This relationship between the goods and/or services is pivotal as it influences the consumers’ perception and potential confusion regarding the source of the goods and/or services in question.

In scenarios where the goods and/or services of the applicant and the registrant are similar in kind and/or closely related, the threshold for determining the degree of similarity between the trademarks, necessary to establish a likelihood of confusion, is relatively lower. This is due to the inherent assumption that consumers are more likely to associate similarly marked goods and/or services as originating from the same source if the goods and/or services are of a similar kind or closely related. Conversely, when the goods and/or services are diverse or unrelated, a higher degree of similarity between the trademarks is necessary to substantiate a finding of likelihood of confusion, given that the connection between disparate goods and/or services is not as readily apparent to the average consumer.

The focus on the relatedness of goods and/or services in a likelihood of confusion analysis is paramount as it serves to uphold the foundational purpose of trademarks – to identify the source of goods and/or services and to prevent consumer confusion regarding such source. By meticulously assessing whether similarly marked goods and/or services are related, examining attorneys can ascertain whether consumers are likely to be misled into believing that the goods and/or services emanate from, or are affiliated with, a common source, thereby preserving the integrity of the marketplace and safeguarding the distinctiveness and reputation of registered trademarks.

Do The Goods and/or Services Travel in the Same Channels of Trade?

Assessing whether the goods and/or services associated with the applied-for trademark and the cited registered mark travel in the same or similar channels of trade is a critical component. This assessment is particularly pivotal when the identification of goods or services in the application is broad and unrestricted in terms of defined uses, classes of purchasers, or channels of trade. In such instances, it might be relatively straightforward for a USPTO examining attorney to establish a likelihood of confusion with a registration for a similar trademark associated with similar goods or services.

The consideration of trade channels is instrumental in determining how and where consumers encounter the goods and/or services associated with the respective trademarks. When there are no limitations specified in the original trademark application, goods and/or services are presumed to be available to the same class of purchasers through identical trade channels. This presumption elevates the potential for consumer confusion, as individuals are likely to encounter both trademarks within the same commercial spaces, fostering a misconception of a common source or affiliation.

Conversely, explicitly outlining restrictions and limitations in the original trademark application concerning the use, target demographic, or channels of trade can mitigate the potential for a likelihood of confusion. For instance, in a hypothetical scenario, an application for “Blended Optix” for alpine ski goggles exclusively sold in the Rocky Mountain states might be distinguished from a registered mark “Blenders Eyewear” for surfing sunglasses solely available in coastal states like Florida, California, and Hawaii. By delineating geographic limitations and specific trade channels in the application, the applicant demonstrates a distinct commercial landscape, reducing the probability of consumer encounter with both trademarks in the same environment, and thereby diminishing the likelihood of confusion.

Thus, keen attention to the channels of trade in a likelihood of confusion analysis is paramount. It not only informs the examining attorney’s understanding of consumer exposure to the marks but also underscores the significance of well-defined limitations in the trademark application. Such specificity in detailing the scope of use, intended consumer base, and distribution channels can prove invaluable in navigating potential conflicts with similar trademark registrations and ensuring the preservation of trademark distinctiveness and integrity in the marketplace.

Have You Been Issued A Section 2(d) Likelihood of Confusion Trademark Refusal

When the USPTO examining attorney issues a Section 2(d) likelihood of confusion refusal, it exemplifies the most prevalent challenge faced by trademark applicants. This refusal is grounded in the assertion that the applied-for trademark closely resembles a registered trademark to such an extent that potential consumers are likely to be confused, mistaken, or deceived regarding the source of the goods and/or services of the applicant and registrant. The determination of this likelihood of confusion is conducted on a case-by-case basis, with the DuPont factors serving as pivotal guidelines. However, the relevance and weight of these factors can vary, with any single factor potentially being decisive depending on the evidence presented.

In responding to a likelihood of confusion Office Action, trademark applicants can construct a multitude of arguments. One potential approach is to underscore the dissimilarities between the trademarks in terms of appearance, sound, meaning, and commercial impression, emphasizing that the overall commercial impression diverges sufficiently to mitigate consumer confusion. Another tactic is to highlight the differences in the goods and/or services, demonstrating that they are not similar or closely related, thus lessening the required degree of similarity between the trademarks to establish a likelihood of confusion. Applicants might also argue the distinctiveness of the trade channels and the targeted demographic, showing that the trademarks operate in separate commercial marketplaces, thereby reducing the possibility of consumer overlap and confusion.

Further, addressing the nature of the average purchaser’s recollection is crucial. The focus should be on demonstrating that the average purchaser retains a general impression of trademarks and that the trademarks in question leave different overall impressions, reducing the risk of source confusion. Applicants can also present evidence of the coexistence of the trademarks without instances of actual confusion, though this can be challenging to substantiate.

Beyond crafting responses to a likelihood of confusion office action, applicants have alternative options. One such option is to seek consent or a coexistence agreement from the owner of the cited registration, illustrating an understanding between the parties that the marks can coexist without causing consumer confusion. Additionally, if the cited registration appears to be vulnerable, applicants may consider filing a petition to cancel the cited registration based on grounds such as abandonment or non-use.

In conclusion, the issuance of a Section 2(d) likelihood of confusion refusal necessitates a comprehensive and multifaceted response from the applicant. Through strategic arguments emphasizing differences in the marks, the nature of the goods and/or services, and the commercial landscape, along with exploring alternative avenues like consent agreements or cancellation petitions, applicants can navigate the challenges posed by such a refusal and advocate for the registration of their trademark.

Contact Our Chicago Trademark Attorneys

Navigating the complexities of trademark registration and addressing office actions issued by the USPTO, including those pertaining to a likelihood of confusion refusal, can be a daunting task. We understand the pivotal role a trademark plays in protecting your brand and ensuring its distinctive presence in the marketplace. Our trademark attorneys are adept at crafting persuasive responses to office actions, aimed at overcoming the hurdles that stand between your trademark application and its successful registration. Whether you’re grappling with refusals based on likelihood of confusion or any other challenges, our team is committed to providing personalized, strategic counsel and advocacy tailored to your unique needs. We invite you to reach out to us to explore how we can assist you in navigating the USPTO processes and safeguarding the integrity and distinctiveness of your brand.