Navigating TM Filings: Strategies to Overcome Likelihood of Confusion Trademark Rejection
In the intricate realm of trademarks, achieving registration is no easy feat. A trademark functions as a beacon, aiding consumers in differentiating your offerings from those of your competitors. However, the journey to registration is riddled with challenges, especially in the United States, where nearly half of trademark applications encounter rejection. Among the many hurdles, a prevalent stumbling block is the intricate concept of “likelihood of confusion.”
This article delves into the nuances of the likelihood of confusion, offering comprehensive insights for applicants. It not only unravels the complexities surrounding this challenge but also provides strategic approaches to both prevent and overcome rejections.
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The Rising Tide of Trademark Rejections
A trademark transcends being merely a name or a logo; it serves as a crucial identifier for consumers to discern your products or services amidst a sea of alternatives. Yet, the journey of trademark applications is fraught with uncertainty. In fact, the United States has the lowest success rate for trademark registration among various countries, with nearly half of the applications being rejected. Over the past five years, the success rate has dropped from 59.1% to 51.7%, while the EU and the UK have maintained high success rates of 90.0% and 78.7%, respectively. (Source)
By navigating the intricate terrain of the likelihood of confusion, applicants can significantly bolster their chances of obtaining trademark registrations successfully.
Getting to the Heart of the Matter: “Likelihood of Confusion”
At the heart of many trademark rejections lies the notion of the likelihood of confusion. This occurs when there’s a plausible risk that your trademark might be erroneously linked to existing registered trademarks. Such confusion arises when marks bear a striking resemblance and are associated with closely related goods or services. This confusion can mislead consumers into believing that the products or services originate from the same source, thus undermining the distinctiveness of your brand.
Likelihood of Confusion Factors
Courts, when assessing the potential confusion between two trademarks or applications, consider a range of 7 to 13 factors. These factors are sometimes called the Polaroid factors after the case of Polaroid Corp v. Polarad Elecs. Corp in 1961. They are also called the DuPont factors after their use in the E. I. DuPont de Nemours & Co case in 1973, which are,
1. The overall similarity of marks in appearance, sound, connotation, and commercial impression.
2. The similarity or dissimilarity and nature of the goods or services.
3. The similarity or dissimilarity of established trade channels.
4. The conditions under which sales are made and the type of buyers involved.
5. The fame of the prior mark, considering 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 actual confusion.
8. The length of time and conditions of concurrent use without evidence of confusion.
9. The variety of goods on which a mark is or is not used.
10. The market interface between the applicant and the owner of a prior mark.
11. The extent to which the applicant has a right to exclude others from using its mark.
12. The extent of potential confusion, whether de minimis or substantial.
13. Any other established fact relevant to the effect of use.
The significance of these factors may vary in each case, and not all factors may be relevant.
Explore further insights into likelihood of confusion rejections, including key reasons, critical factors, and notable cases, by delving into our comprehensive compilation. Take a moment to read and enhance your understanding.
Strategies for Overcoming “Likelihood of Confusion” Rejection
One of the challenges of trademark registration is to avoid a likelihood of confusion refusal, which means that the USPTO examining attorney finds that your mark is too similar to another registered or pending mark for related goods or services. Considering this, it’s crucial to have plans in action to either prevent or reduce the likelihood of trademark refusals right from the beginning. While it may be challenging, the upcoming strategies provide actionable steps that you can manage.
Preventive Strategies for Likelihood of Confusion Trademark
1. Conduct Comprehensive Research
The best way to avoid a likelihood of confusion refusal is to conduct a comprehensive clearance search and understand how to correctly assess your results before submitting your application. A clearance search involves checking various sources, such as the USPTO database, state trademark registers, domain names, social media platforms, and online directories, to see if there are any existing marks that are identical or similar to your proposed mark. You should also consider the scope of protection that your mark may receive, based on factors such as its distinctiveness, descriptiveness, and genericness. A clearance search can help you avoid potential conflicts, save time and money, and increase your chances of obtaining a registration.
With so much to search for, it’s best to hire an IP research firm. They know all the tips and tricks to thoroughly search and provide clearance. While many businesses handle searches internally, outsourcing to proficient trademark search companies has advantages beyond cost savings. You get exceptional results and can focus more time on critical matters.
2. Try keeping your mark unique
To avoid being rejected or challenged for your trademark, you should choose a mark that is unique and distinctive. A unique mark is a word or symbol that has no relation to the goods or services it identifies. A distinctive mark is a word or symbol that has acquired a secondary meaning or reputation in connection with the goods or services. These marks are more noticeable and less likely to be confused with other marks. Examples of:
- Unique marks: KODAK® for cameras, XEROX® for photocopiers, ROLEX® for watches.
- Distinctive marks: APPLE® for computers, NIKE® for shoes, STARBUCKS® for coffee.
On the other hand, a mark that is descriptive, suggestive, or generic is more likely to cause confusion, especially if it is used for similar or related goods or services. A descriptive mark tells something about the goods or services, such as their quality, feature, function, or characteristic. A suggestive mark hints at something about the goods or services, without directly describing them. A generic mark is the common name for goods or services. These marks are less distinctive and more difficult to register and protect. Therefore, you should aim for uniqueness and distinctiveness to enhance your mark’s visibility and security.
Examples of:
- Descriptive marks: BEST BUY® for electronics, SHARP® for TVs, SPEEDY® for car repair.
- Suggestive marks: COPPERTONE® for sunscreen, JAGUAR® for cars, NETFLIX® for streaming service.
- Generic marks: BANANA for bananas, CAR for cars, BOOK for books.
3. Make your goods and services as unique as possible
Another crucial aspect in sidestepping a likelihood of confusion refusal is to ensure the uniqueness of your goods and services. Avoid employing broad or vague descriptions; instead, opt for specific and precise terms that distinctly outline the nature, purpose, function, or features of your offerings. For instance, rather than a general “footwear” description, you might consider specifying “handcrafted leather boots for outdoor enthusiasts.” Crafting distinct and precise descriptions diminishes the chances of your goods and services overlapping with others in similar or related categories.
Corrective Strategies for Likelihood of Confusion Trademark
Upon encountering rejection, employing corrective strategies becomes imperative. Various methods exist to overcome the likelihood of confusion refusal, tailored to the specifics of your case. Some of the most common methods include:
1. Submitting Arguments and Evidence against rejection
The first and most common method to overcome a likelihood of confusion refusal is to submit arguments and evidence that show that there is no likelihood of confusion between your mark and the cited mark.
a) Insights from Statistics & Significance of Initial Argument
Recent data from the Trademark Trial and Appeal Board (TTAB) reveals essential insights. In 2020, the TTAB supported 90.9% of decisions on high confusion likelihood. Conversely, the previous year witnessed a mere 6% success rate in contesting rejections for similarity, with 94% of cases unsuccessful. These stats focus on appeals, where the first attempt didn’t work.
Trademark appeals to the TTAB often occur after an initial rejection. Given the dwindling success rates in subsequent appeals, the initial argument holds significant weight—it might practically be your last. So, your initial argument really matters.
b) Addressing Key Factors
To bolster your case, address critical factors considered by the examining attorney, including mark similarity, similarity of goods and services, trade channels, consumer resemblance, cited mark strength, and evidence of confusion.
c) Supplementation with Evidence
Strengthen your arguments with additional evidence, such as declarations or surveys, to strengthen your case.
d) Understanding Attorney Discretion
Recognize the examining attorney’s discretion in evaluating the merit and relevance of your arguments and evidence. Therefore, ensure your submissions are clear, concise, and persuasive.
You can argue on the following pointers:
- Argue no overlap in consumers or trade channels
- Highlight distinctiveness of your mark
- Provide Evidence of prior use
- Emphasize product/service dissimilarity
- Demonstrate geographical separation
- Trade channels and distribution methods
- Advertising and promotional efforts
2. Filing a petition for cancellation against the cited registration
Challenge the validity of an existing trademark registration by filing a petition for cancellation. This legal proceeding can be based on grounds such as fraud, abandonment, genericness, or likelihood of confusion. If successful, you can eliminate the conflict and proceed with your application.
However, you should be aware that filing a petition for cancellation is a complex and costly process that involves legal fees, discovery, evidence, and trial. Therefore, you should only consider this option if you have a strong case and are willing to invest time and money.
3. Seeking a Consent and Coexistence Agreement
Pursue an agreement with the owner of the cited registration that allows mutual use and registration of the marks without infringing on each other’s rights. It may include terms limiting the marks’ scope, use, or geographic area, and addressing quality control, dispute resolution, or indemnification. Such an agreement can convince the examining attorney that there’s no likelihood of confusion, allowing your application to proceed.
However, obtaining this agreement may be challenging if the owner of the cited registration is unwilling to cooperate, negotiate, or compromise. Consider this option only if you have a positive relationship with them or a compelling reason to persuade them.
4. Amending Your Application
Modify your application to limit your goods or services, or to change your mark. By doing so, you can reduce similarity or relatedness with the cited mark and create a more distinctive mark that is less likely to be confused.
However, amending your application may have drawbacks, such as losing the priority date of your application, scope of protection of your mark, or goodwill of your mark. Therefore, consider this option if you are willing to accept the consequences of your amendment.
- Distinguish your mark from the cited mark: Discuss visual, phonetic, and meaning differences, emphasize any distinctive design elements or stylization.
5. Requesting Suspension of Your Application
Suspension temporarily halts the examination of your application, pending the outcome of another matter that may affect the registrability of your mark. You can request suspension if you have filed a petition for cancellation against the cited registration or are involved in a civil action concerning the cited mark. While suspension can help you avoid the final refusal of your application and provide time to resolve the conflict, it does not guarantee approval and may prolong the registration process. Therefore, only consider this option if you have a valid reason and are confident of a favorable outcome.
6. Submit Evidence of No Actual Confusion
When examining a trademark application, the USPTO examining attorney is deciding on the likelihood of confusion, and not whether actual confusion exists. Provide evidence like declarations showing years of concurrent use without confusion reports.
Conclusion
Effectively navigating the likelihood of confusion issues in trademark filings requires careful attention and strategic planning. By employing preventive measures and deploying corrective strategies effectively, businesses can enhance their chances of securing trademark registration and protecting their brand identity in the competitive marketplace. With thorough preparation and persuasive responses to objections, it is possible to successfully address the likelihood of confusion concerns. Taking proactive steps to resolve conflicts and utilizing available legal options can further solidify trademark protection for businesses.
Here at Sagacious IP, we provide a comprehensive Trademark Search service aimed at providing clients with the necessary insights prior to trademark registration. Our search empowers businesses to save both time and resources by preempting potential infringement issues and avoiding rejection. For more information, please visit our Trademark Search service page.
- Gopal Singh Rawat, Mitthatmeer Kaur, Inderpal Singh Chowdhari & the Editorial team
