Likelihood of Confusion in the Trademark Registration Process


The purpose of registering a trademark is to protect your unique brand from being used or misappropriated by others. Significantly, trademark registration doesn’t only safeguard your distinct mark from being used without your permission — it also prevents others from using words or logos that could cause confusion for consumers.

If there is a likelihood of confusion between your brand and another, the United States Patent and Trademark Office (USPTO) may deny the subsequent application for registration. Additionally, if there is a chance consumers would be confused between two marks, the Lanham Act allows a trademark owner to commence an infringement lawsuit against a party who is wrongfully misusing their brand.

What is “Likelihood of Confusion” With Trademarks?

The United States Patent and Trademark Office looks carefully at every application to determine whether a trademark meets the necessary legal requirements for registration. While there are several reasons a trademark application may get denied — or an office action may be issued — one of the most common reasons is that there may be likelihood of confusion with existing registered marks. While there is no mechanical test for determining the likelihood of confusion, every trademark application is evaluated individually based on its own set of facts.

To determine whether marks are so similar as to result in a likelihood of confusion, the USPTO examining attorney will consider the similarity between the marks. They will evaluate the sound and appearance of each mark, as well as the relatedness of the goods or services in connection with the marks, and a number of other factors.

When it receives a trademark application, the USPTO conducts a search for conflicting marks. It may issue a refusal if it finds that the application mark looks or sounds similar to previously registered marks. However, if the USPTO overlooks a similar mark, a trademark owner can also oppose the registration of a mark during the 30-day opposition period. This is the time frame in which parties with a legitimate interest in the outcome of the trademark registration can attempt to oppose the registration of the application trademark.

Filing an Opposition With the Trademark Trial and Appeal Board

It is critical for owners to monitor their trademarks. Every week, the USPTO publishes approved trademark applications in the Original Gazette — if you are diligently monitoring your mark and identify one that is confusingly similar, you may timely file an opposition with the USPTO to prevent the mark from being registered. The Trademark Trial and Appeal Board is the tribunal that hears trademark opposition proceedings.

Essentially, opposition proceedings are similar to trials. Limited discovery is permitted and oral argument may be requested. In addition, if you do not agree with the Board’s decision, you can file an appeal with the Federal Circuit or a district court that has jurisdiction.

Trademark Infringement Lawsuits Based on Likelihood of Confusion

If you discover that another company has been using a logo, design, or slogan similar to the one that represents your brand, the first step is to send a cease and desist letter to the infringing party. If the infringement continues, you may be able to commence a lawsuit in federal court to stop the party from using it — and recover any damages you incurred due to the misuse. However, these types of cases do not require actual confusion between two trademarks — rather, the “likelihood of confusion” is the applicable standard.

Although each of the 13 circuit courts analyze different factors in determining whether a likelihood of confusion exists, the Trademark Trial and Appeal Board — as well as the federal circuit — apply the 13 factors set forth in In re E.I. du Pont de Nemours & Co. in deciding the outcome of a case. These factors include:

  1. The similarity or dissimilarity of the marks as to their appearance, sound, connotation, and commercial impression.
  2. The similarity or dissimilarity of the goods and services described in the application, or in connection with which a prior mark is in use.
  3. The similarity or dissimilarity of trade channels that have been established and are likely to continue.
  4. The conditions under which sales are made — i.e. whether they are impulse purchases or sophisticated purchases.
  5. The fame of the prior mark in terms of sales, advertising, and length of use.
  6. The number and nature of similar marks in use on similar goods.
  7. The nature and extent of any instances of actual confusion.
  8. The length of time during and conditions under which there was no evidence of actual confusion.
  9. The variety of goods on which the mark is used.
  10. The market interface between the trademark applicant and prior owner of the mark.
  11. The extent to which an applicant has a right to exclude others from using the mark.
  12. The extent of potential confusion.
  13. Any other established facts that are probative of the effect of use.

Usually, a plaintiff’s immediate concern in a trademark infringement action is obtaining an injunction to prevent further harm to their brand while the court case is pending. Once the court decides the outcome of the trademark infringement litigation, a successful plaintiff may recover the amount of the defendant’s profits from the infringement or their monetary losses in connection with the infringement. A court may also award the royalties the plaintiff would have been paid had the defendant licensed the trademark. Injunctive relief and monetary damages are not available in TTAB.

Contact an Experienced Trademark Attorney

Nothing is as important to a business owner as the integrity, identity, and goodwill of their brand. If you have discovered that there is a likelihood your mark would be confused with another, it is vital to contact a skilled trademark attorney to discuss your legal rights and remedies. Located in Ann Arbor, Michigan, the Trademark Lawyer Law Firm, PLLC offers high-quality trademark services to business owners and entrepreneurs for a wide variety of trademark matters. Contact us today to schedule a free 15-minute consultation.