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What is Likelihood of Confusion in Trademark Law?

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This is a very important concept, and often misunderstood by new business owners trying to come up with a new name for their company, product or service.

The law says that you cannot use a name (or mark) that is “confusingly similar” to a pre-existing trademark. What is “confusingly similar?”

What we care about is a “likelihood of confusion”, called a Section 2(d) Refusal by the USPTO. The likelihood of confusion test bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods of the parties. Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”).

There are a number of factors, but the two key considerations we see time and again from the USPTO are (1) the similarities between the compared marks, and (2) the relatedness of the compared goods.

As it relates to the similarities of the compared marks, the USPTO has many rules and procedures it uses to compare similarity, based on similarities in appearance, sound, connotation and commercial impression. It is not necessary to find similarity in all categories. “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018). In short, the test isn’t whether something is “the same,” but “similar.”

In comparing similarity, the USPTO will do many things, including but not limited to:

  • Equate synonyms (i.e. Box < – > Cube)
  • Equate abbreviations (i.e. Lux < – > Luxury)
  • Equate translations (i.e. Rojo < – > Red)
  • Equate words and made-up words (i.e. Translate < – > Trnsl8)
  • Equate common words found in a similar industry, even though they are different words (i.e. Athletics < – > Running)
  • Equate different forms of the same word (i.e. Adapt < – > Adaptive)
  • Place a high value on the first word, prefix or syllable, even if the remainder of the trademark is very different (i.e. Adapt Athletics and More < – > Adaptive)
  • Ignore descriptive terms, prepositions, prepositional phrases and articles (i.e. “the” and “a/an”) in a mark (i.e. The Ciclical < – > Cicle)

The above is not an exhaustive list, but it should give you some indication of what we’re up against.

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