By UpCounsel Trademark Attorney Tiffany Donaldson

Trademarks are source identifiers, meaning that they identify what company produced a product or service. The United States began regulating trademarks in the late 1800s. Over the years, trademark law has grown and developed, but at the core is the original purpose – to protect consumers. Trademark law strives to hold business owners accountable, so that consumers can be sure who the producer is when they purchase a product.

“Likelihood of Confusion” is a phrase associated with evaluation of whether a trademark may be registered with the United States Patent and Trademark Office (USPTO), and whether a trademark is infringing to another trademark. 15 U.S.C. 1052, §2d. The phrase refers to the evaluation of the likelihood that a consumer would be confused as to who the producer of a product is through use of the trademark. Generally, a consumer would be confused if one producer uses a trademark that is very similar to that of another producer in the same industry.

Most consumers have experienced product confusion due to branding at some point in time. For example, have you ever purchased an over-the-counter medicine and returned home to find that you accidentally purchased the generic version? If so, you were confused enough by the product packaging to have mistaken one product for another. You may have also experienced confusion in the cereal aisle, or cookie aisle or wherever generic products are found.

The USPTO may only register trademarks that are not likely to cause confusion with trademarks being used by other producers in the same industry. Trademarks that an examiner determines will cause confusion are denied under 15 U.S.C. 1052, §2d. If you want to register a new trademark, it is very important that you review the likelihood of whether your new trademark will be confused with a trademark already registered by a different producer. If your mark is too close to a federally registered mark in your same industry, it is likely that your trademark will be denied by the USPTO trademark examiners.

Case law has developed that has created factors to be considered by the Courts in evaluating likelihood of confusion. These include:

  • strength of the mark;
  • proximity of the goods;
  • similarity of the marks;
  • evidence of actual confusion;
  • marketing channels used;
  • type of goods and the degree of care likely to be exercised by the purchaser;
  • defendant’s intent in selecting the mark;
  • likelihood of expansion of the product lines.

If you attempted to register a trademark and it was denied by the USPTO based upon likelihood of confusion with another trademark, consult a trademark attorney. A trademark attorney will help you evaluate whether you should continue to pursue the trademark by responding to the denial, or move on and find a new trademark.

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About the author

Tiffany Donaldson

Tiffany Donaldson

Tiffany has experience advising a wide range of companies on formation, contracts, minutes, trademark, branding, employment, non-disclosure and non-compete agreements, licensing, and franchise related issues.
She previously worked for commercial and bankruptcy law firms, as an e-discovery attorney, and has clerked for the Maryland Court of Special Appeals.

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