When the Trademark Office reviews your application, they are checking it in several ways.  They will check and see if you have submitted a proper specimen.  They also make sure that your mark is distinctive enough to be registered.  One check that they always perform is a trademark search.  This search checks to see if your mark is confusingly similar to an existing registration or pending application.  If they find a conflict, the Trademark Examining Attorney will issue an office action rejecting your application.

Obviously, it is best if you can avoid such a rejection.  This is why I recommend having a trademark attorney perform a search prior to filing your application.  These rejections are very difficult to overcome, and can be costly as well.

So what is a “confusingly similar” trademark?  And how is that determination made?  With trademark law, you gain the rights to a particular trademark by using it in commerce.  A confusingly similar mark infringes upon those rights.  This is a mark that is so related that consumers are likely to mistake it with the first mark.  Trademark law exists to secure rights to a mark and prevent this type of confusion.  The Trademark Office therefore tries to prevent the registration of confusingly similar marks.

The “how” of this process becomes more difficult.  There are several factors considered in such an analysis.  However, there are two factors that are typically weighted most-heavily: (1) the similarity of the marks; and (2) the relatedness of the goods and/or services described in the application and registration(s).  In other words, the Trademark Office compares the applied-for trademark and its goods/services with the marks and goods/services of other applications and registrations.  If you’re too close, the Trademark Examining Attorney will refuse registration of your mark on the basis of a “likelihood of confusion” with the mark they found.

Here are a few examples of recent Trademark Trial & Appeal Board cases where the TTAB found the two trademarks in question to be confusingly similar:

• HOPNOTIC for “beer” and HPNOTIQ for “liqueur”;
• FLOSSBONE for “edible chews for dogs” and FLOSSIES for “dog treats”;
• HOLAIRA for “medical devices for treating obstructive lung diseases” and ALAIR for “medical therapeutic devices for use in the treatment of pulmonary diseases”;
• WOODY WHEAT and WOODY STOUT and WOODY BROWN ALE, all for “beer”; and
• FLIP’N CHICKEN and FRICKIN’ for “restaurant services.”

Of course, there are many examples where the TTAB does not find a likelihood of confusion, too:

• MONARCH ROASTING for “coffee sold in cartridges for use in single serve brewing machines” and LA MONARCA BAKERY & CAFE for “restaurant and cafe services”;
• NOT SO SIMPLE SYRUP for “syrups for making beverages” and KEEP IT SIMPLE SYRUP for “simple syrup”; and
• ZEN TEA TRADERS and MY ZEN TEA for “tea.”

I would be surprised if you agreed with the findings for all of these examples.  Determining whether two marks are confusingly similar can be difficult.  It is important to remember that the more similar the marks, the less related their goods/services have to be to find a likelihood of confusion.  Marks that consist of the same word(s) can therefore be confusingly similar even if it seems that their goods/services are unrelated.

The factors for a likelihood of confusion analysis come from a case called In re E.I. du Pont de Nemours & Co.  The two factors already mentioned are the most important.  However, several other factors are also considered.  The following are just a few of the additional factors:

• The similarity of the channels of trade the marks are used in;
• Whether the mark cited against the application has become famous;
• Whether there has been any actual confusion between the marks; and
• The conditions under which and buyers to whom sales are made.

This analysis is not just used in the examination of trademark applications.  It also applies to trademark oppositions or cancellations.  In those proceedings, another party is asserting a likelihood of confusion with their trademark.  For oppositions, they are trying to prevent an application from becoming a registration on this basis.  For cancellations, they are trying to cancel a registration.

Have You Found a Confusingly Similar Trademark to Your Own?

If you aren’t sure whether your trademark is available for registration and would like the help of an experienced trademark attorney, please call me at (480) 360-3499, email me at kevin@yourtrademarkattorney.com, or complete the contact form found on this page to schedule your free initial consultation today.  I look forward to speaking with you.