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Likelihood of confusion refusals under 2d of the Lanham (Trademark) Act
- 12 August, 2023
- Nyall Engfield
On the grounds of a likelihood of confusion with a registered mark, a typical office action will reject the registration of your trademark as confusingly similar to another registered trademark, under Section 2(d) of the Lanham Act. In this case, the examining attorney has the right to object to the registration of a mark they believe is too similar to an existing registered mark and will likely lead to confusion, error, or deception.
A Probability of a Likelihood of Confusion
The examining attorney will consider many elements, with some examples listed below, to determine whether a mark is likely to lead to confusion:
- the degree to which the marks are alike or dissimilar in terms of look, sound, connotation, and commercial impressions. Especially important are the first few letters or sounds.
- the degree to which the goods or services are comparable to or dissimilar from each other and their nature as detailed in an application or registration in connection with which a prior mark is already in use. Are they the same type of product or substitutes? Or do they serve different purposes?
- the similarity or difference between well-established trade channels that are likely to endure. Are they sold beside each other on shelves, or is one only sold in specialty stores to knowledgeable professionals?
- the characteristics of customers to whom sales are made, such as "impulse" vs. cautious, sophisticated purchasing. For example, people are very careful about medical devices that are inserted into their body, compared with stationery or clothing items.
- the type and scope of confusion that exists in reality. If there has been no confusion between the two marks over a longer period of time, this is helpful to the Examiner.
- a legitimate consent pact between the applicant and the proprietor of the already-registered mark. The parties can agree that the application is not confusingly similar to the registered mark.
The applicant must use the aforementioned criteria against the potentially confusing mark in order to properly react to a refusal to register based on a likelihood of confusion. It is crucial to keep in mind that not all the criteria are equally weighted, and in any given situation, certain components may be more crucial than others.
The similarity of the markings themselves, however, is the most crucial aspect in the great majority of situations.
Why Are Two Marks Comparable?
When identical terms or phrases, or similar sections of terms or phrases, occur in the compared marks and produce a similar overall commercial impression, the marks may look confusingly similar. In Crocker National Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690–691 (TTAB 1986), for more information. Even though trademarks are examined as a whole, one component of a mark may be more important or predominate in shaping a consumer's perception of it. Take a look at In re Viterra Inc., 671 F.3d 1158, 1362 (Fed Cir 2012).
As you can see, it can be difficult to establish whether a proposed mark would lead to confusion. For instance, the applicant should emphasize all potential visual disparities, such as spelling, sound, and any other aspect that could give the wrong commercial impression.
Another strong defense against a risk of confused office action is to point out the relevant trade routes, or how consumers are likely to find the marks.
We can help with refusals like 2d likelihood of confusion. Please contact us for a quote.
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