Likelihood of confusion is one of the common grounds for trademark registration refusal, but it can often be avoided or minimized. Trademark registration refusals on this ground are also called 2 (d) refusals. It is because they are based on Section 2(d), 15 U.S.C. §1052(d), according to which a trademark cannot be registered if it consists of a mark that resembles a mark registered or previously used in the U.S.
The likelihood of a confusion issue can arise at different stages of trademark protection:
- trademark search, the main point of which is to identify conflicting trademarks and assess the chances of further trademark registration;
- refusal to register a trademark based on conflicting trademarks;
- an opposition filed by a third party who considers trademark filed to be similar to their trademark;
- cancellation of the trademark registration, if the petitioner of cancellation considers that the registered trademark is similar to its trademark; and
- even at the stage of trademark infringement.
The most cost-effective way to handle the likelihood of confusion issues is to conduct a trademark search and then, based on its results, analyze possible conflicting marks, assess risks of getting refusal in trademark registration, and even of getting an opposition from the trademark holder against trademark application. When assessing similarity, the United States Patent and Trademark Office (USPTO) is guided by 13 factors of likelihood of confusion, which are also called DuPont factors. The most significant among them are the following:
Similarity of Trademarks as One of the Key Factors of Likelihood of Confusion
Not only identical trademarks are considered, but also similar trademarks. It is precisely the similarity that raises many questions, for example:
- You plan to register a trademark consisting of two words, one of which has already been registered by another person as a trademark; or
- You plan to register a trademark and, based on trademark search results, you notice that the same word, but in Spanish, has been registered as a trademark; or
- There is already a registered trademark that differs from yours by one letter.
The answers to these questions regarding the expediency of continuing registration or, on the contrary, trademark changes are handled on a case-by-case basis, often by a trademark attorney with experience in conducting searches, trademark filings, and responding to preliminary refusals.
However, below are some principles that may shed light on the issue of the similarity of conflicting trademarks:
- Trademarks are analyzed in their entireties (i.e., not a single word or element, but the trademark as a whole);
- Appearance, sound, connotation, and commercial impression are taken into account.
Even if the trademarks sound different or have a different appearance, yet have similar commercial impressions, it can still lead to a likelihood of confusion. For instance, in the opposition case of Nintendo of America, Inc. v. the individual who filed the FLASH BOY trademark, Nintendo argues that the FLASH BOY trademark can’t be registered because of the likelihood of confusion with Nintendo’s registered trademarks GAME BOY, GAME BOY ADVANCE, GAME BOY POCKET, and others. The Trademark Trial and Appeal Board (TTAB) found that even though there are dissimilarities between the trademarks in sight and sound, the similarities in commercial impression were strong enough to support a finding of likelihood of confusion. It is stated that both trademarks consist of 2 words, and the second word is BOY. TTAB in their decision stated that “consumers are likely to see the mark FLASH BOY, and believe that it is a version of GAME BOY intended to be used on or in connection with flash memory” (Nintendo of America, Inc. v. Adar Golad, Opp. No. 91178130 (TTAB February 16, 2011) (non‑precedential)
Similarity of Goods or Services as One of the Key Factors of Likelihood of Confusion
The more similar the trademarks are, the less similar the goods or services should be in terms of likelihood of confusion. All goods and services for trademark registration purposes are grouped into 45 classes of the Nice Classification. These classes are determined by the applicant or their trademark attorney when filing the application. The application fee, and later the maintenance, renewal trademark fees, and others, depend on the number of classes claimed.
However, from the point of view of likelihood of confusion, the belonging of goods or services to one class is not decisive, since the criteria for similarity of goods is whether consumers would be confused as to the source of goods or services.
To determine the similarity of goods or services, it is recommended to work with a trademark attorney who can analyze your situation and potential conflicting trademarks based on the results of a trademark search. However, below are some rules with examples of registered trademarks that may be useful in determining the similarity of goods or services:
- If goods and services belong to different classes, this does not mean that they are not related.
The fact that the goods and services of two conflicting trademarks belong to different classes does not automatically mean that the goods are unrelated. For example,
in the case concerning the cancellation of the trademark KICK ASS, which was registered, among other things, for clothing, the TTAB concluded that “there is at least a ‘viable relationship’ between coffee and clothing sold under the identical mark,” which influenced the similarity of the trademarks in favor of the trademark owner.
- If goods and services belong to the same class, this does not necessarily mean that they are related.
The fact that goods or services belong to the same class does not automatically mean that there is relatedness between them. For example,
trademark SK was registered for “metal display racks for supporting articles in class 20, and after trademark SK was registered for goods of class 20, namely “curtain rings”.
The issue of likelihood of confusion is particularly relevant for software and hardware. The key to answering this question is often not the similarity of the goods or services themselves, but the likelihood of confusion among consumers. For example,
the Pathfinder trademark was registered for goods in class 9, “downloadable computer game software in the nature of fantasy and role playing games”, while the Pathfinder trademark in the name of another owner had previously been registered for “computer hardware and recorded software for data analysis and organization” in class 9.
It is also essential to understand that relatedness is assessed not based on the actual use of trademarks, but on the scope of goods/services for which the trademark is applied or registered. That is, if a conflicting trademark was registered for a broader term denoting goods or services, but is used in a narrower sense of that term, you cannot appeal to the fact that its actual use is limited.
Besides the above-mentioned, other DuPont factors are also taken into account when analyzing the likelihood of confusion, for example, which trade channels are used, what the purchasing conditions are, the fame of the existing mark, etc. Incidentally, TTAB in a case regarding the similarity of trademarks GAME BOY and FLASH BOY considered the fame of Nintendo’s GAME BOY trademark as well.
The likelihood of confusion is a key issue not only for trademark registration, but also for company or product brand creation and development. This is why a balanced and well-considered approach can help you avoid unnecessary expenditure of resources and time. Trademark attorney Mariya Ortynska can help you build a strategy tailored to your business goals. Book a free initial consultation with Mariya in a few clicks.
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