How does confusion affect a trademark application?
Overall, trademarks are typically assigned to an Examining Attorney (the “examiner”) about 3 – 4 months after the application is filed. Once assigned, the examiner ensures that the application meets the minimum requires for trademark registration. One such requirement is that a mark is not registerable if “there is a likelihood of confusion as to the source or sponsorship of the goods or services because of the marks used thereon.” TMEP §1207.01. Specifically, if the examiner determines that there is a likelihood of confusion, they will refuse registration of the applied-for mark under §2(d). Id.
What Factors Help Determine When a Likelihood of Confusion Exists?
To determine whether a likelihood of confusion exists, an Examiner at the USPTO looks to the du Pont factors. While all the factors are relevant to a likelihood of confusion determination, the two most important factors are:
- The similarity of the marks; and
- The relatedness of the goods or services to one another.
Furthermore, the greater the similarity that exists between the actual marks, the less similar the goods or services need to be. TMEP 1207.01(a). Thus, the more similar the two marks are to one another, the less similar the actual goods or services each respective mark provides needs to be.
Additionally, the following factors are also relevant to the likelihood of confusion determination.
- The similarity of the channels of trade;
- The sophistication of the purchaser;
- The number and nature of similar marks used for similar products;
- The existence of a valid consent agreement;
- The fame of the prior mark;
- The nature and extent of the confusion;
- Evidence of actual confusion;
- The length and time of the two marks concurrently without confusion; and
- Any other established fact probative of the trademark’s use in commerce.
For example, the Trademark Trial and Appeal Board (TTAB) has held the following examples to be confusingly similar.
- BOCCA DOLCE for “chocolate confections” being confusingly similar to BOCCA for “caramels in the nature of candy, chocolates.” In re Nino Salvaggio Fruit & Vegetable Market, Inc., Serial No. 88138756 (Aug. 18, 2020).
- JUST DREW IT! for “athletic apparel” being confusingly similar to JUST DO IT! for “clothing.” Nike, Inc. v. Jamin Caldwell and Courtney Miles, Opposition No. 91240394 (Apr. 28, 2020).
- SPACE PACK for plastic storage bags being confusingly similar to SPACE BAG for storage bags. In re South Coast Industries LLC, Serial No. 87848470 (Jun. 11, 2020).