Protecting Your Brand, Part 2 - Just what is "Confusingly Similar"?

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In Part 1, we discussed the importance of conducting a trademark search, preferably before investing too much into a brand only to learn that your trademark cannot be registered or, worse, infringes someone else's trademark. The most common reason for the U.S. Patent and Trademark Office (USPTO) to refuse a trademark registration is because there is a "likelihood of confusion" between the mark you applied for and an already registered mark. Put simply, in order to protect consumers, two trademarks generally cannot be "confusingly similar" to one another.

The question isn't whether your trademark is identical to someone else's. The question is how similar the two trademarks in question are and whether both marks are being used for related goods and services. For example, you wouldn't be able to trademark "McDonald's Burger Joint" for obvious reasons, but you could make a good argument to trademark "McDonald's Financial Services" because burgers and financial services are not related goods or services.

What makes two different trademarks similar?

The USPTO assigns an examining attorney to every trademark application. The examining attorney runs a number of searches in the Trademark Electronic Search System (TESS) to look for similar marks: spelling variations, words that sound the same when spoken aloud, visual similarities, similar meanings or translations, or words or images that create the same general commercial impression.

When conducting a trademark search before submitting a trademark application, look for not just the trademark in question, but also for spelling variations that otherwise sound the same:

• T. Markey v. Tee Marquee
• Big Dogs v. Big Dogz
• Band-Aid v. Bandaid
• Xceed v. X-Seed

Search for words with the same meaning, especially foreign words and their English translations:

• Lupo v. Wolf
• K-9 v. Dog

But also search for words with similar meanings or that might convey the same general impression:

• City Woman v. City Girl

Even when trying to register a word mark (as opposed to a logo), look to see if your brand name or slogan is used in someone else's logo. Simply changing fonts or colors isn't enough. Often, adding an image or logo to the word(s) won't be enough either. On the other hand, when searching for similar images or logos, look for similar design elements. What is the consumer's eye most likely to be drawn to?

What makes goods or services related?

Technically, two marks can be similar (even identical) as long as they are not being used in connection with related goods or services. Using one of our earlier examples, you might use K-9 in connection with t-shirts while someone else uses K-9 in connection with a a dog-walking service. If the goods and services are not related, then the USPTO shouldn't find a "likelihood of confusion."

However, the USPTO can be incredibly broad when evaluating whether goods or services are related. Every good or service in the world is divided into 45 international classes. For example, "clothing and apparel products" is one class. It doesn't matter that your company might be making high-end suits and another business is making accessories for bowlers; if you both have similar trademarks, the USPTO is likely to reject your trademark application citing likelihood of confusion. In other words, because both goods are in the same class, there is an assumption that consumers might be confused about the source of the goods.

The same is true of services. "Education and entertainment services" is one class. So if you offer consulting or business coaching services, your trademark registration could be denied if a youth sports club has a similar mark that is already in use.

Bottom Line: Conducting a Trademark Search is More Art Than Science

You have to conduct a thorough trademark search before submitting your application to the USPTO. And even then, there's no guarantee that you'll find every potential mark that the examining attorney may raise an issue with. There is so much case law analyzing just what is confusingly similar and what goods and services are related, that it's a matter of conducting both a good search for the mark itself and good legal research.

Continue to Part 3 - How to Register Your Trademarks

If you find yourself lost in a maze trying to figure out whether your trademark is likely to cause confusion with another, then schedule a consultation today:

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