Similar trademarks can exist, but when registering a trademark, it's important not to use a trademark that's “confusingly similar” to an existing one. 3 min read
2. Determining Similarities in Trademarks
Similar trademarks can exist, but when registering a trademark, it's important not to use a trademark that's “confusingly similar” to an existing one. The Trademark Office will likely reject applications for a mark that could confuse the public about the association or relationship it has with another company's trademark.
How the USPTO Analyzes Similarities
The U.S. Patent and Trademark Office (USPTO) checks applications for several things, including the following:
- If the applicant has turned in a proper specimen
- If the trademark is distinctive enough not to be confused with another one
The Office will conduct a trademark search to see if your mark is “confusingly similar” to marks that are already registered or pending application. Your application will be rejected if the Trademark Examining Attorney finds a conflict.
Entities that hold trademarks have the rights to that mark and are able to use it in commerce. Marks that are too similar to existing ones infringe on those rights. Trademark law works to prevent this confusion, so the USPTO tries to bar registration of trademarks that could confuse the average consumer.
The Trademark Office consider two factors most heavily:
- How similar the marks are
- How related the goods/services are
The applied-for mark and its goods/services are compared to other registrations and applications and their goods/services. If they're too similar, the application will be rejected on the basis of a “ likelihood of confusion .”
It's not always easy to determine if two trademarks are actually confusingly similar. If the goods/services of the two marks aren't related, it's less likely to cause confusion. However, when trademarks contain the same word(s), they can create confusion even if their industries aren't related.
Additional factors that determine similarity include the following:
- Whether an existing mark is famous
- How similar the channels of trade are between marks
- If there's been actual confusion caused by the similarity
- The consumers
- The conditions under which sales are made
Analyzing similarity isn't just done for trademark applications. It's also done for mark oppositions or cancellations. For those situations, one party asserts a likelihood of confusion with its mark. They're trying to either cancel a registration or stop an application from becoming a registration.
The USPTO compares marks by examining them in their entireties, including their sound, meaning, appearance, and commercial impression.
Determining Similarities in Trademarks
A big misconception about trademark similarity is that the testing of likelihood of confusion compares the marks side by side. This isn't an appropriate test. The actual test takes into account all relevant facts about the marks' sounds, appearances, connotations, and commercial impressions.
- Considering all those, does a likelihood of confusion exist as to the services or goods?
- Will the average consumer believe that the two trademarks are connected, affiliated, or related?
- Will he or she think that the goods or services come from the same source?
If there's a common word or phrase in different trademarks, they might be considered similar, even if there are other letters or words added. If the shared part of different trademarks is the dominant element of the mark, the examiners are more likely to rule for confusion.
The opposite can be true, so if two marks both have a descriptive word that the average consumer wouldn't find distinguishing, examiners probably won't find a likelihood of confusion there.
Marks may be found similar if they sound alike, but there's really no correct way to pronounce a trademark. The thought behind this rule is that no one can predict how a consumer might pronounce a specific trademark or term.
The trademark's meaning in connection to its services or goods has to be determined in the application. An Examining Attorney presumes that a person seeing the mark will have a general impression of the mark and not a specific one.
While some people may try and create trademarks that are similar to existing ones (especially famous marks ), the USPTO carefully examines all applications. The Office will reject marks that are designed to confuse consumers, most often in an effort to profit from a more well-known trademark. It's best to apply for trademarks that are unique and distinguishable if you want your application to be accepted on the first try.
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