When forming your trademark and preparing for registration, you will want your attorney to conduct a trademark search. As part of this search, your attorney will want to determine if there are other existing marks that may cause a likelihood of confusion with your brand’s mark. The greater the chance of a likelihood of confusion between your mark and others, the harder it will be to obtain a registration for your mark. The United States Patent and Trademark Office (USPTO) is empowered to refuse the registration of a mark based upon likelihood of confusion.

What Does Likelihood of Confusion Mean?

One of the main objectives of trademark law is to protect consumers. One way of doing that is to prevent or limit any confusion that could occur with different trademarks that the consumers may encounter. Specifically, the federal government wants to prevent the consumers from confusing the sources of goods or services.

The phrase “likelihood of confusion” finds its origins within Title 15, Section 1052(d) of the United States Code, which allows the USPTO to refuse a mark if it “so resembles a mark” that is already registered with the USPTO and is used for similar goods or services as the one you are trying to register. Whether there is actual confusion is irrelevant. All that matters is whether there is a likelihood of confusion from the perspective of the consumers.

When addressing likelihood of confusion, the courts have often said that there is no “bright line” or easy rule to help determine whether two marks would cause a likelihood of confusion. We do have some guidance though. In the famous case of In re E.I. du Pont de Nemours & Co., the court overseeing the case explained that there were thirteen factors that we should consider when determining whether likelihood of confusion existed. Soon afterwards, they became known as the “DuPont Factors.”

Of those thirteen, the USPTO gives great weight to (1) how similar the marks are and (2) how similar the goods or services are. Also, the more similar two marks are, the less similar the goods or services have to be in order to find a likelihood of confusion. For example, if the two goods are bananas on one hand and motor oil on the other hand, but the marks were extremely similar, the chance of the USPTO finding a likelihood of confusion is higher, regardless of the great difference in the goods.

What Can You Do?

The more unique and creative your mark is, the less likely your chances are of having the USPTO refuse to register your mark due to a likelihood of confusion. However, your chances of success are better if you are working with an attorney who can conduct a trademark search on your behalf. Thorough trademark searches allow an attorney to determine what existing marks can cause a likelihood of confusion with your proposed mark.

Working with an attorney early on may also prevent you from spending unnecessary money in the future trying to defend your mark against others. Although we briefly touched upon two factors to consider in the likelihood of confusion analysis, there are eleven more factors to consider, and there are additional levels of the factors to consider, such as what words in a mark mean in foreign languages and whether words in the marks sound alike.

An experienced and licensed trademark attorney can help you navigate the murky waters of the law that surrounds likelihood of confusion. Make sure to reach out to one when tackling your trademark application.

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