Likelihood of Confusion at the USPTO Explained

What standard to USTPO Trademark Examining Attorneys apply to their Likelihood of Confusion analysis when reviewing trademark applications?

The primary purpose of trademark law is to allow consumers to quickly identify the maker of goods or the provider of services by a familiar name, logo or any other identifying source indicator including things such as color or sound.  To sort out whether a trademark is too similar to a previously existing trademark or not, the federal trademark statute, i.e. the Lanham Act, bans use and federal registration of trademarks that are confusingly similar to other trademarks already registered or in existence. Much of trademark law rests on the concept of “likelihood of confusion” or more simply put, is one trademark likely to confuse consumers as to the source of the goods or services provided.

Many companies in China try to rip-off American brands, so often the most obvious and blatant examples of trademarks that are “likely to confuse” consumers come from China (indeed, that is the point of many of these Chinese companies) and serve as examples of the most egregious trademark infringements. For instance, look at the logos below quickly:

If you look fast enough, you may not even notice the differences between these two logos. But with a second look, it becomes clear that they are indeed slightly different. It is near impossible to conclude, however, that “UNCLE MARTIAN” developed their logo without Under Armour in mind, and without the express purpose of confusing consumers who buy their products that they are actually purchasing authentic Under Armour gear.

Although the above example is clearly likely to confuse consumers, what about names or logos that are not as similar? What are the objective standards and guidelines for determining if one trademark is likely to confuse consumers based on a previous trademark? Thankfully, the United States Patent and Trademark Office gives guidance as to what standards Trademark Examining Attorneys use when reviewing trademark applications with the USPTO.  

The Trademark Manual of Examining Procedure, aka the rules Trademark Examining Attorneys follow, sets out the factors an examining attorney is supposed to weigh when making a likelihood of confusion analysis. The factors that are weighed the most heavily are:

1) The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression; and

2) The relatedness of the goods or services as described in the application and registration(s).

In other words, how similar are the actual trademarks? For instance, in the example above, the logos are nearly identical and have a very similar appearance and commercial impression, despite one company using UNDER ARMOUR underneath the logo and the other using UNCLE MARTIAN. The second prong of this test is how similar are the goods and services? If one company is called FLAMINGO LIMOS for transportation services, and another company names themselves FLAMINGO SUNSCREEN for sunscreen, those two trademarks may be able to co-exist because most consumers would be able to tell if they are renting a limo or buying sunscreen and not be confused about who provided the goods or the services.

In addition, the Examining Attorney will consider the additional following factors when determining whether an applied for trademark is likely to confuse consumers about a previously registered trademark.

  • The similarity or dissimilarity of established, likely-to-continue trade channels.
  • The conditions under which and buyers to whom sales are made, i.e., “impulse” vs. careful, sophisticated purchasing
  • The number and nature of similar marks in use on similar goods
  • The existence of a valid consent agreement between the applicant and the owner of the previously registered mark

For more details and explanation about the factors analyzed, and how they are put into practice, by Examining Attorneys, the best place to start with is the Trademark Manual of Examining Practicing (TMEP) and in particular at TMEP §1207.01.

With the above in mind, keep following the Granite Trademark Services blog, where we will post a close case each week and let readers know how the USPTO Examining Attorney came out in the case.

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