Dealing with a likelihood-of-confusion (confusingly similar) rejection in a trademark application

A confusingly similar rejection is made in an office action on your trademark application when the trademark examiner believes that there is a likelihood of confusion between your trademark and the mark of another. In making this determination, the examiner will consider both the similarities of the marks and the goods and services on which the marks are to be used.

What is the significance of a mark being confusingly similar to another?

When reviewing a new application for registration, the examining attorney at the USPTO will compare the mark that you are seeking to register against the USPTO's trademark database to determine if the proposed mark potentially conflicts with any existing trademark. To determine whether a conflict exists, the trademark examiner must consider whether there is a “likelihood of confusion” or “confusing similarity” between the applied-for mark and any existing marks. More details on what constitutes a likelihood of confusion are found in Section 1207.01 of the Trademark Manual of Examining Procedures (TMEP) and in Section 2(d) of the Lanham Act (35 U.S.C. 1052(d)). Bitlaw contains a legal description of this standard in its discussion of trademark infringement.

In general practice, the trademark examiner will review USPTO records to determine if the mark applied for resembles an existing mark to the extent that there is likely to be confusion or a potential for a mistake as to the source of the goods and/or services associated with the applied-for mark.

Likelihood of confusion is determined by looking at several factors regarding the similarity of the marks, the similarity of the goods and services associated with the marks, their respective channels of trade, evidence of actual confusion, and several other considerations collectively known as the “DuPont factors” as put forth in In re E. I. du Pont de Nemours & Co. 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973). The DuPont factors are taken together as a whole and are not equally weighted, but of paramount significance is the similarity of the marks in terms of their appearance, sound, connotation, and commercial impression as well as the relatedness of the goods and services associated with the marks.

Analyze whether the rejection is appropriate

If your mark is rejected as being confusingly similar to an existing mark, overcoming the rejection may be a challenge. Before you attempt to overcome the rejection, first consider the marks in question. Ask yourself: “are the marks similar?” If you believe that they are not, in fact, similar, then attempt to articulate precisely how they differ. But it is important even at this early stage of analysis to keep in mind the DuPont factors and recognize that confusing similarity is not established by exact copies but with a far broader scope, including:

  • sound-a-likes that may look on paper very different than the written mark being applied for but merely sound similar when spoken aloud;
  • pluralizations or similar modifications to root words, which are often considered confusingly similar to such root words and vice-versa;
  • a foreign language equivalent to an English language mark will also often be found to be confusingly similar and vice-versa; etc.

Arguments to make in responding to the rejection

Even if the marks in question are quite similar or even identical, the differences in the goods and/or services associated with the marks may provide a basis for overcoming the likelihood of confusion rejection. If the marks in question are for dissimilar goods or services, then a good argument should be possible that a reasonable consumer would not be confused as to the origin of such goods.

For example, "Mustang" is a trademark of the Ford Motor Company and is associated with a particular type of automobile. The same word is also a trademark owned by a different company that sells seed under the Mustang trademark. A third company has registered the Mustang mark for the selling of gambling machines and online gaming services. Although each company has registered and uses the same mark, they do so on different goods or services. As a result, none of these identical marks were deemed to be confusingly similar. Other examples of identical marks that are nevertheless not considered confusingly similar due to their very different goods and/or services associated with them include: Delta for airlines, Delta for faucets and sinks; Amana for various appliances sold by the Maytag Corporation, and Amana for various goods and foodstuffs sold by the Amana Society, Inc.

The fact that similar marks can be simultaneously registered on different goods and services is significant because it provides the applicant with a possible workaround to a likelihood of confusion rejection. If your mark is rejected as being confusingly similar to another, you should first consider the differences between your goods and services and those of the mark cited by the examiner. If they are clearly different, you should argue against the rejection by pointing out that difference. If the goods are similar, it may be possible to amend the goods and services description in your application to avoid the potential confusion. Any such amendment must narrow the description because you are not allowed to add new goods or classes to a trademark application after it has been filed. The amendment should move the description away from those of the registered mark that is the basis of the rejection. For example, if your original description of goods was for "gaming software," it might be possible to amend the description of goods to "gaming software downloadable to smartphones related to movie theater management." Depending on the extent of the differences and the surrounding facts, such an amendment may overcome the rejection.

Other arguments and distinctions can be asserted against the mark that the examiner is citing as the basis of the confusingly similar rejection. For example, the applicant may be able to make a convincing assertion that the marks at issue are not confusingly similar by demonstrating via polls or surveys that the marks are not confusing to actual or potential customers of the goods and/or services associated with the marks in question. In other cases, an applicant may be able to acquire a consent agreement from the holder of the trademark being asserted by the examiner to be confusingly similar.

The take away here is that a likelihood of confusion rejection asserted against your application for trademark registration while potentially difficult to overcome, is not necessarily the end of the road. If you are facing such a rejection you have options, and we at TBE would be happy to discuss your mark, your rejection and the options for overcoming it, with you.

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This guidance is provided by the attorneys of Forsgren Fisher McCalmont DeMarea Tysver. Please contact us if you need help protecting your intellectual property. The legal information provided in this guidance should be distinguished from actual legal advice. Please see the Guidance index page for more information.