A likelihood of confusion refusal of your Federal trademark application is an allegation that your mark is not unique enough to specifically identify your product or service to American consumers.

It is the result of a prior registered trademark or service mark bearing an uncanny resemblance to yours, or vice versa.

When it issues a likelihood of confusion refusal (also known as an “Office Action”) in response to a trademark registration application, the US Patent and Trademark Office (USPTO) is saying that consumers seeking to buy a similar product or service anywhere in the US will be confused as to who is selling what.

This is because another trademark or service mark has been registered already and is active on the Principal or Supplemental Trademark Registers.

But what exactly presents a real likelihood of confusion? How similar do two trademarks need to be to run a risk of refusal?

And, most importantly, what can you do about it if you do receive a likelihood of confusion Office Action?

How Similar Is A Likelihood of Confusion?

The question of how similar does similar need to be to present a likelihood of confusion in the eyes of a USPTO Examiner or, for that matter, a Federal judge asks what the legal standard is in this case.

A legal standard is, essentially, a test that must be met for an allegation or assertion in a legal proceeding to be judged true.

Here, the legal standard for a likelihood of confusion is, first and foremost, not exact.

This is the most important takeaway for those who are not trademark lawyers, in fact. It is common for business owners or entrepreneurs to conduct less-than-expert Google or TESS trademark database “knockout” searches, simply search for exact matches for their proposed trademark.

That is, you might search TESS for BARGLEBARGLE, the name of your e-commerce pet supplies store, fail to find that exact match, and presume that you are safe to file your trademark registration application.

Meanwhile, because you didn’t think to search for this exactly (and TESS will not turn up “approximate” search results), another company, last year, registered a trademark for GARGLEBARGLE—an e-commerce site that also sells pet supplies.

If you do not retain an experienced Michigan trademark attorney to run a professional pre-application trademark clearance search for you, you will fail to locate this conflicting mark.

And a conflict it is.

If you file your trademark registration application on your own or some cheap non-attorney website, you will end up with a likelihood of confusion Office Action in your inbox within a few months.

So the likelihood of confusion standard is not “exact.” What is it, then?

The Likelihood of Confusion Standard: No Mechanical Test

There is no “mechanical” likelihood of confusion test or standard. This is settled law arising from the seminal likelihood of confusion case, In re E. I. du Pont de Nemours & Co.

This case laid out a variety of factors which would or would not persuade a court that a likelihood of confusion exists in any given case. These factors are still utilized in likelihood of confusion Office Action refusals, the responses to those refusals, and in private party infringement litigation on a daily basis.

Generally, however, a likelihood of confusion exists where a trademark or service mark so much resembles a registered mark that it may cause confusion among US consumers of that product or service.

The vagueness and ambiguity of this general rule-of-thumb is what resulted in the du Pont decision, and all subsequent likelihood of confusion litigation.

The du Pont factors are:

• The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.
• The relatedness of the goods or services as described in the application and registrations.
• The similarity or dissimilarity of established, likely-to-continue trade channels.
• The conditions under which and buyers to whom sales are made (impulse buyers vs. sophisticate buyers).
• The number and nature of similar marks in use on similar goods.
• The existence of a valid consent agreement between the applicant and the owner of the previously registered mark.

The first two of these factors are of the most primary importance in likelihood of confusion disputes.

Thus, if two logos are completely identical, this will outweigh an argument that the products to which those logos are attached are sold in different “trade channels” (i.e., for example, one product sold via e-commerce website vs. another sold from the back of a truck driving around the Midwest).

Nevertheless, it is settled law that all of these factors must be considered

To muddy the picture further, the question is not whether, necessarily, two trademarks are likely to be confused—but, instead, whether those marks will confuse people into thinking that the products or services being sold with them come from the same source.

This may at first appear to be a distinction without a difference, but the bottom line is not to assume that the analysis stops with a side-by-side comparison of two trademarks.

The USPTO’s Trademark Trial and Appellate Bureau (TTAB) and courts will examine all of the above factors, and more, to determine whether a consumer would likely think that he or she is buying something from one source when, in fact, it comes from another because of the association of the confusing trademark.

It is also worth noting that the goods and services sold under the confusing marks do not need to be identical, or even in the same International Class of goods or services.

Whether or not products or services sold in association with conflicting trademarks are “related” is a question addressed by a huge body of TTAB and Federal case-law.

You may distribute craft beer, for example, on a wholesale basis with a certain logo on the bottle label, and this may seem not to be “related” to the services sold by a restaurant that happens to have registered a trademark for a visually similar logo already. However, if that restaurant sells beer, or, worse, your brand of beer, a likelihood of confusion can certainly arise.

Trademark Likelihood of Confusion: The Bottom Line

The bottom line with regard to trademark likelihood of confusion is that you don’t want to learn about it the hard way, after filing your trademark registration application on your own and receiving an Office Action refusal.

The best way to avoid such issues is, first, to brand your product or service as creatively and uniquely as possible, conducting as much market research as possible before investing in marketing, inventory, or anything else.

Beyond that, the second best way to avoid a likelihood of confusion refusal at the USPTO level is to retain an experienced Michigan trademark attorney to conduct a thorough pre-filing clearance search prior to drafting and filing your trademark registration application.

A trademark clearance search conducted by a knowledgeable professional will reveal any confusion landmines that may be lying in wait for your application.

If such refusals are received, you will then have a trademark lawyer on hand to draft and file the proper response that will, hopefully, resolve the refusal to obtain registration for your trademark.

Noble Path Trademark Law is a boutique US law practice located in Metro Detroit and assisting individuals, entrepreneurs, artists, musicians, start-ups, and enterprises of scale in all industries with trademark registration, trademark renewal, trademark monitoring, and Office Action refusal response matters.

We offer virtual consultations, premium customer service, and the expertise you need to maximize your odds of trademark registration success.

Click the “Register Your Trademark” button below to schedule your initial consultation and to begin your brand protection journey.