A Trademark is a branding device (typically a name, logo, or phrase) which when used in conjunction with the sale of a good or service, identifies the source-company which sells the good or service. A registered trademark provides the owner of the mark with the sole and exclusive right to use the mark, or a sufficiently similar version of the trademark, as a branding marker on its good/services. In the event that a competitor were to attempt to register the same, or sufficiently similar iteration of the trademark in the United States Patent and Trademark Office (USPTO), it would very likely be rejected on the grounds that it would cause a “Likelihood of Confusion” among potential consumers. In legal parlance, this is a 2(d) Office Action. So, how do the examining attorneys at the USPTO determine what will and will not cause a “Likelihood of Confusion”? Fundamentally, the Office will consider the basic similarities between trademarks; the sound, appearance, impression, and/or meaning of the respective marks. There is certainly an element of “you know it when you see it” involved in this determination, but more precisely, the USPTO looks to the famous Du Pont test which consists of a set of factors which when properly evaluated, will lead to an accurate prognosis of the existence of a “Likelihood of Confusion.
THE DUPONT TEST
The Dupont test was derived from the famous, In re E.I. du Pont Nemours & Co., case and consists of the following factors:
- The similarity or dissimilarity of the marks in their entireties as to appearance, sound,
connotation, and commercial impression.
- The similarity or dissimilarity and nature of the goods described in an application or
registration or in connection with which a prior mark is in use.
- The similarity or dissimilarity of established, likely-to-continue trade channels.
- The conditions under which and to whom sales are made, i.e., “impulse” vs. careful,
- The fame of the prior mark.
- The number and nature of similar marks in use on similar goods.
- The nature and extent of any actual confusion.
- The length of time during and the conditions under which there has been concurrent
use without evidence of actual confusion.
- The variety of goods on which a mark is or is not used.
- The market interface between the applicant and the owner of a prior mark.
- The extent to which applicant has a right to exclude others from use of its mark on its
- The extent of potential confusion.
- Any other established fact probative of the effect of use.
The examining attorney will basically juggle the merits of each particular factor, while giving greater weight to the appearance of the mark and similarities of goods, and simply arrive at a conclusion.
LIKELIHOOD OF CONFUSION DOES NOT REQUIRE A 1:1 MATCH BETWEEN THE MARKS
Often, people fall into the trap of simply conducting a free trademark search and after not finding a direct match with any existing marks, assume that the trademark is acceptable. This is a mistake however, because under the 2(d) Likelihood of Confusion Analysis, the test of Likelihood of Confusion is not whether the marks can be distinguished when subjected to a side-by-side comparison, but whether the marks are sufficiently similar such that there is a likelihood of confusion as to the source of the goods or services. See Zheng Cai v. Diamond Hong, Inc.,
If the marks are so similar as to be confusing, in the sense that a consumer may mistake the product bearing the trademark as belonging to the company selling the other company’s product, the Likelihood of Confusion threshold will be met. This is an important point; How will consumers relate to the new trademark vis-à-vis the senior trademark already registered? Will potential consumers believe that the owners of these two respective trademarks are affiliated with each other? Perhaps they are owned by the same parent-company? Or maybe there is a licensing deal at play? Let’s dig a bit deeper into what the word “similar” actually means in this context.
WHAT DOES THE TRADEMARK LOOK LIKE?
Under the Dupont Test, the appearance of the two marks in question do not of course need to be identical to trigger a Likelihood of Confusion. Indeed, the addition and/or subtraction of certain features of the trademarks is not sufficient to obviate a 2(d) rejection. Instead, examining attorneys will look to the “dominant” feature of the marks; if they are the same in both marks, there will very likely be a Likelihood of Confusion rejection issued. Conversely, if the two marks contain minor similarities but are fundamentally distinguishable, there will very likely be no Likelihood of Confusion. For example, a new shoe company could not simply add the word “Pro” to “NIKE”, calling themselves NIKE PRO, and avoid a Likelihood of Confusion rejection with NIKE because the word “nike” is the dominant composite part of this new NIKE PRO mark.
HOW DOES THE TRADEMARK SOUND?
Clever applicants are sometimes struck with the intuition that if they only change the lettering of a given trademark, such that it is dissimilar from an existing mark, the Likelihood of Confusion will be reduced. This is not unfortunately the case. Examining attorneys will consider the phonetics of both the senior trademark and the junior mark and if the pronunciation of one is too similar to the other, there will be a 2(d) Likelihood of Confusion. Returning to our NIKE example, if this craft startup were to call itself NIKAY, they again would trigger a Likelihood of Confusion rejection. Why? Because the the sound of NIKAY is sufficiently similar to NIKE to cause a Likelihood of Confusion with potential consumers.
THE MEANING OF THE TRADEMARK
The given meaning of the senior trademark vs the junior mark is often a hotly debated point between the owners of the two marks. If the junior applicant’s mark were to be rejected based on a 2(d) objection, the burden of proof will be on him to demonstrate that his mark carries a substantially different meaning than the Senior Mark. This may be done by citing a dictionairy definition of the marks, demonstrating that perhaps there are multiple meanings which may be freely interpreted by a theoretical consumer. Alternatively, the applicant may highlight the signifigant and meaningful differences between the goods themselves, thus showing that it would be impossibly unlikely to that consumers would suffer from any confusion.
TRADEMARKS AND COMMERCIAL IMPRESSION
The “Commercial Impression” factor to a large extent speaks to the totality of the aforementioned factors: It is another factor that helps the Office compare similarities between the two trademarks and asks the big picture question, how do the marks “seem” to the consumer? What does the trademark represent vis-à-vis the products sold. This birds-eye view impression encompasses a trademark’s appearance, sound, pronunciation, and general perception of the mark’s meaning. “Commercial impression” is the archtype idea of the brand and product line
SPEAK WITH A TRADEMARK LAWYER AND REGISTER A TRADEMARK FOR YOUR LOGO
Determining whether or not a prospective trademark would trigger a Likelihood of Confusion rejection is part art and science. Certain marks are obviously impermissible because of infringement issues (a new shoe company could never obtain the trademark, “NIKEY” while others are far more ambiguous. Before you file a trademark, make sure you do your due diligence. Speak with one of our trademark attorneys to learn more about the trademark process.