Can I trademark my business name? As IP attorneys, we hear this question daily. To be eligible for federal trademark registration, your business name must satisfy certain criteria. One of the most important considerations is whether someone has already registered a similar name for similar goods or services. During examination of every trademark application, a trademark examiner searches the USPTO database for any existing registrations for similar trademarks. If an examiner determines that consumers would likely be confused between your trademark and an existing trademark registration, the examiner will issue a likelihood-of-confusion rejection. Sometimes, the similarity between the trademarks is dead-on. However, in many cases the applied-for trademark can be meaningfully distinguished from the cited registration. Overcoming a likelihood-of-confusion rejection can be challenging, but, with proper strategy, quite feasible.
Evidence is key
All trademark examiners are attorneys, and, therefore, they value evidence. When issuing a likelihood-of-confusion rejection, a trademark attorney will present multiple supporting exhibits. These exhibits can be dictionary definitions, online search results, third party articles, and any other evidence that helps examiner establish that consumers would likely be confused between the applied-for mark and an existing trademark registration.
It is nearly impossible to overcome a likelihood-of-confusion rejection simply by arguing that the two trademarks are dissimilar. Indeed, such arguments, unless buttressed by adequate evidentiary support, usually fall on deaf ears. To convince the examiner to withdraw the rejection, you must present substantive evidence.
Outevidence the Examiner
So, what kind of evidence generally yields the desired outcome? It depends. Section 1207.01 of Trademark Manual of Examining Procedure (TMEP) provides an excellent outline of various factors that trademark examiners must consider in the likelihood-of-confusion analysis. Presenting evidence pertaining to each favorable factor is key. For example, if the cited trademark is registered on a Supplemental Register, the registration certificate stating this fact would be a powerful exhibit. If the trademark application falls within a crowded field, examples of actual third-party usage can be persuasive. For marks that create different commercial impressions, industry-specific definitions can negate likelihood-of-confusion. The examples of available evidence are numerous.
Most trademark examiners do a wonderful job. If they believe that consumer confusion between two trademarks is likely, they provide evidence on which such finding is based. Most examiners will also readily admit that they may lack commercial expertise in many industries. Accordingly, they are generally open to considering factors of which they might not have been aware when issuing the initial rejection.
Most trademark examiners are reasonable individuals, ready to reverse their rejections, but only based on concrete, persuasive, and well-researched evidence. A good rule of thumb is this: to increase the odds of overcoming a likelihood-of-confusion rejection, present more evidence negating the likelihood of confusion than the examiner provided in support of the rejection. In other words: outevidence the examiner.
An effective strategy for overcoming a likelihood of confusion (Section 2(d)) rejection requires a case-by-case approach. Section 1207.01 of the TMEP provides a list of key considerations that may negate likelihood of confusion.
Yes. Trademark examiners are attorneys and, therefore, value evidence. Every argument in favor of registrability of a trademark needs to have evidentiary support.