The USPTO will refuse registration of an applied-for trademark under Section 2(d) of the Lanham Act if there is a likelihood of confusion. In other words, a USPTO examining attorney will refuse registration for an applied-for federal trademark if the examining attorney reaches the conclusion that the applicant’s mark, as used on or in connection with the specified goods or services, so resembles a pending or registered mark as to likely cause confusion.

The Lanham Act reads as follows: “No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it…consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive.”

Modern Likelihood of Confusion Test

Under the Trademark Act, the standard applied is the same “likelihood of confusion” rule applicable to the test of trademark infringement.  Likelihood of confusion depends upon whether the purchasing public (generally, the reasonable, average consumer) would mistakenly believe that the applicant’s goods or services originate with, are sponsored by, or are in some way associated with the goods or services sold under a registered trademark.

In the 1973 DuPont decision, the U.S. Court of Customs and Patent Appeals (CCPA) discussed the factors relevant to a determination of likelihood of confusion. Although the weight given to the relevant DuPont factors may vary, the following thirteen factors are key considerations in any likelihood of confusion determination:

  • The similarity or dissimilarity of the trademarks in their entireties as to appearance, sound, connotation and commercial impression (the court looks at the pronunciation of the mark, its appearance, and the verbal translation of the conflicting marks);
  • The similarity or dissimilarity and nature of the goods or services as described in a trademark application or trademark registration in connection with which a prior mark (senior mark) is in use;
  • The similarity or dissimilarity of established, likely-to-continue trade channels.  Restriction of channels to avoid a 2(d) conflict.  Where the identification of goods is restricted to certain narrow channels of trade, it can avoid a finding of a likelihood of confusion with a registration for a similar mark for related goods;
  • The conditions under which and buyers to whom sales are made, i.e., impulse vs. careful, sophisticated purchasing (buyers typically exercise greater caution when purchasing expensive or unusual items);
  • The fame of the prior mark (sales, advertising, length of use);
  • The number and nature of similar marks in use on similar goods;
  • The nature and extent of any actual confusion (if a company can show that there has been actual confusion, this is a very strong argument);
  • The length of time during and 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 (house mark, family mark, product mark);
  • The market interface between applicant and the owner of a prior mark: (a) a mere consent to register or use, (b) agreement provisions designed to preclude confusion, i.e., limitations on continued use of the marks by each party, (c) assignment of mark, application, registration and good will of the related business, or (d) laches and estoppel attributable to the owner of the prior mark and indicative lack of confusion;
  • The extent to which the applicant has a right to exclude others from use of its mark on its goods;
  • The extent of potential confusion, i.e., whether de minimis or substantial; and
  • Any other established fact probative of the effect of use.  The CCPA emphasized that almost any evidence bearing on the likelihood of confusion is admissible.  The only issue will be the weight to be accorded the evidence.

It is important to note that not all DuPont factors will be relevant to every case.  Only those factors of relevance to each case need to be weighed and considered.  Additionally, in close cases of likelihood of confusion, the senior user of a trademark is entitled to the benefit of the doubt.

Likelihood of Confusion vs. Actual Confusion

A mere possibility that a consumer will be confused in the marketplace is not enough to refuse a trademark on a likelihood of confusion basis.  Likelihood of confusion is synonymous with “probable” confusion.  This is an important distinction because to find a likelihood of confusion with another trademark the confusion must be probable and not a mere possibility.

When a USPTO examining attorney tests for likelihood of confusion, he or she is not required to prove actual instances of confusion – as actual confusion is difficult to prove.  Rather, the USPTO examining attorney only needs to provide support showing that confusion is probable if both marks existed in the marketplace.

As noted above, Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods of the parties.  The three key considerations in any likelihood of confusion analysis are: 1) the similarities between the compared marks, 2) the relatedness of the compared goods, and 3) the similarity of the trade channels of the goods.

Marks are compared in their entireties for similarities in appearance, sound, connotation and commercial impression.  Similarity in any one of these elements may be sufficient to find the marks confusingly similar. When comparing the marks, the test is not whether the marks can be distinguished in a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impression that confusion as to the source of the goods offered under the respective marks is likely to result.  The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of the marks.  Further, the average purchaser will generally remember the first word in any composite mark where that first word is the dominant term of the mark.

Are the Goods and/or Services Related?

When the goods and/or services of the parties are not directly competitive, the question of likelihood of confusion is whether the goods and/or services are related.  In other words, are the goods and/or services of the parties related in the sense that purchasers are likely to believe that such goods and/or services, similarly marked, come from the same company, or are somehow connected with or sponsored by the same company? Where the goods of the applicant and registrant are “similar in kind and/or closely related” the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as in the case of diverse goods.

Do The Goods and/or Services Travel in the Same Channels of Trade?

When an identification of goods or services is not restricted to certain defined uses, classes of purchasers, or channels of trade, it may be easier for the USPTO examining attorney to find a likelihood of confusion with a registration for a similar mark for similar goods or services.  Restricted channels of trade not reflected in the original trademark application are regarded as irrelevant.  Therefore, it is important to restrict certain uses, classes of purchasers, or channels of trade in the original trademark application where there may be conflicts with other similar registrations covering similar goods and/or services.  Without limitations in the original trademark application (and resulting registration), the same goods and/or services are presumed to travel in the same channels of trade to the same class of purchasers.  For example, and this is only a hypothetical, if an applicant seeks to register the trademark “Blended Optix” for apline ski goggles only sold in the six Rocky Mountain states, the USPTO examining attorney may be persuaded not to issue a likelihood of confusion refusal based on the cited registered mark for “Blenders Eyewear” for surfing sunglasses only sold in Florida, California and Hawaii.

Overcoming a Section 2(d) Likelihood of Confusion Trademark Refusal

A Section 2(d) likelihood of confusion refusal is the most common refusal issued to trademark applicants.  The USPTO examining attorney will issue a trademark applicant an office action setting forth the following rules:

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a potential consumer would be confused, mistaken, or deceived as to the source of the goods and/or services of the applicant and registrant. A determination of likelihood of confusion under Section 2(d) is made on a case-by-case basis and the factors set forth in In re E. I. Du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) aid in this determination. Not all the DuPont factors, however, are necessarily relevant or of equal weight, and any one of the factors may control in a given case, depending upon the evidence of record.

When comparing marks, the test is not whether the marks can be distinguished in a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impression that confusion as to the source of the goods and/or services offered under the respective marks is likely to result. The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks.

Where the goods and/or services of an applicant and registrant are “similar in kind and/or closely related,” the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as in the case of diverse goods and/or services.

Section 2(d) likelihood of confusion refusals are often difficult to overcome.  If you are a trademark applicant that has been issued an office action refusal based on likelihood of confusion, we encourage you to contact our law office and discuss your case with one of our trademark attorneys.  Our attorneys can review your case and explore a few options, such as, submitting a formal response to the office action setting forth various arguments against the finding of a likelihood of confusion, creating a new mark to avoid a likelihood of confusion refusal and submitting a new application for trademark registration, contacting the owner of the conflicting trademark and negotiating a consent or co-existence agreement, requesting clarification or limitations for the description of goods and/or services, narrowing the class of purchasers for which the goods and/or services will be sold, narrowing the trade channels in which the goods and/or services will travel.  The number of options available to a trademark applicant to overcome a Section 2(d) likelihood of confusion refusal will depend on the trademark applied-for and the specific facts surrounding use in the marketplace.