Trademark Confusion

One of the most common reasons Examining Attorneys at the U.S. Patent and Trademark Office (“PTO”) initially refuse registration of trademarks is “likelihood of confusion.” In other words, the PTO is concerned that the trademark subject of a new application will be confused with another mark that already exists in their database. Under Section 2(d) of the Trademark Act, “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” may NOT achieve registration with the PTO.

Various factors go into a determination of whether two marks are “confusingly similar.” The famous case In re E. I. du Pont de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973) famously set out thirteen factors to be considered in a likelihood of confusion analysis. The most important factors are almost always the similarity or dissimilarity of the marks in their entireties as to appearance, sound connotation and commercial impression, and the similarity or dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use. Likelihood of confusion is best analyzed on a mark-by-mark basis, and arguments can be made to overcome Examining Attorneys’ initial rejections.

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