Hey guys! Welcome to the second part of our series of posts about trademarks and trademark registration. Previously, we discussed distinctiveness and the levels of distinctiveness needed for your trademark to be approved. If you would like more information on that, click HERE.
Today, we’re going to look at the second biggest criteria for registration: the likelihood of confusion. Where distinctiveness is all about the relationship of your mark to the types of products and services selling, likelihood of confusion is about how similar is your mark to other marks that are already out there for the same types of products or services.
If you have ever looked for margarine at a grocery store, you would immediately see a wall of yellow tubs and bottles exclaiming similar misbeliefs about their products not being butter. Those similar sounding names are at the heart of the problem.
They are intentionally causing confusion. They want you to pick their product, even if it’s accidental. But they cannot use the same name. That would be a violation of their trademark.
Unless your goal is to be a knock-off of another product, you want to make sure your mark doesn’t get lost in the sea of margarine. Let’s say somebody else had a law firm called Intellectual Strategies. I would be unable to get a trademark registered for my own use of Intellectual Strategies as a name for a law firm because it is the exact same thing that somebody else is already doing. It wouldn't be fair to the other company.
What the examining attorney does when you apply for your mark is look at the mark that you’re applying for and they search through different classifications for similar marks. America has an interesting classification system.
Every type of product or service is divided into classes. There are thirty-four classes for goods and another ten classes for services. For example, law firms fall into one class and business consulting, which I would view as a very similar business, falls into a different class, so an examining attorney looked for information about at my mark application in several classes how close it is to other people’s marks.
The factors they look for, called DuPont Factors, include sounds, presentation, word choice, and colors. Their goal is to gain an understanding of what is the overall impression of the mark and its relationship to other marks in those classes.
The examining attorneys might reject your trademark application because they can make an argument that there's a likelihood of confusion with another registered mark; that if they gave you exclusivity on your mark, your use of the mark for those products or services that could cause confusion for the customers of somebody else who's already using that mark.
The second biggest reason why trademark applications get rejected is because of the likelihood of confusion arguments.
The standard is really about the customers, from a customer's perspective. If they saw my mark, would they get confused and think that my services originate from or are endorsed by somebody else with a similar mark? Do you want your customers lost in the margarine aisle?
The second biggest reason why trademark applications get rejected is because of the likelihood of confusion arguments. But there are ways to prepare for and prevent this from happening to you. A lot of reasons for denial for likelihood of confusion come down to the facts. It’s important to really investigate and understand those DuPont factors.
You want to be able to use them to explain your mark both from a technical standpoint and from a legal standpoint to show why your use of the mark would not create a likelihood of confusion. That's something you want to look at when you create your mark, from the point of selecting your mark to when you apply for a trademark.
If you can get a good estimation of whether or not you would cause likelihood of confusion, then you can anticipate what the rejections will be and how hard it might be to get your trademark registered and what obstacles you might face.
I have conversations with clients all the time where the clients have already picked a brand they love and they don't want to change their mark. When this happens, we have to look at the issue very matter-of-factly. Sometimes, the difference between a trademark getting approved or rejected is based on the client’s ability to be flexible with their mark.
This does not mean that every mark will need a complete overhaul. This means that, in some cases, adjustments will have to be made in order for your mark to be approved. Being flexible and finding solutions to issues may seem scary, but can end up with a better result than the idea you thought you loved originally.
I always emphasize the importance of doing a thorough search. That way, we can come back and know if you might face any issues as you move forward with your application. Without preparation, you won’t have the information you need to prevent problems down the road.
If we know there might be an issue, we can work on moving or adopting your mark in a different way so that that distances itself from the existing marks that are out there. But without flexibility and preparation, there is a higher chance of running into issues with likelihood of confusion at some point in your application process.
The truth is that we don't always know what the examiner is going to tell us. The application process is just that: a process. And while some of the trademark examiners are good about working with the trademark applicants, you don’t want to have to rely on that.
By anticipating problems before they happen, you can prevent likelihood of confusion issues and potential rejections. Knowing where you might have problems and finding solutions before you submit your application can save you time, money, and provide your mark with a solid foundation.
If you find yourself having issues with likelihood of confusion, consider having a member of our team help you with a trademark search to look for any potential issues. Likelihood of confusion is the second most frequent reason trademarks are denied. Let us help you avoid confusion.
I recently had a Q&A chat with a friend and fellow business owner about all things TRADEMARKS.
Practical and easy-to-follow tips and tricks that will make any trademark protection for your brand even stronger.