What is a “Confusingly Similar” Rejection by the Trademark Office?

One of the frequently issued rejections by the Trademark Office (“Office”) is that the proposed trademark is confusingly similar to an existing or pending trademark.

When a new trademark application is received, the examiner at the Office commences the registration process by conducting a comprehensive search of the USPTO’s database to identify any identical or similar marks.

One of the first things an examiner at the Office does upon receiving a new trademark application is to conduct a search of the USPTO’s database to find any identical or similar marks. If the examiner finds any registered mark or another pending application that closely resembles the proposed mark, then the Office will promptly issue an office action indicating that the proposed mark is deemed to be confusingly similar to those marks.

A “confusingly similar” rejection simply mean that the similarity between the marks can create confusion among consumers about the source of the goods or services, and potentially harm the existing trademark owner’s business. As a result, the USPTO may deny the registration of the proposed trademark to prevent consumer confusion and protect the existing trademark owner’s rights.

In determining likelihood of confusion, the Office will consider two questions: (1) whether the marks are similar, and (2) whether the class of goods or services are the same or related such that an ordinary consumer would believe that the goods or services came from the same source.

Just because two marks are similar does not necessarily mean that the Trademark Office will automatically reject them as being confusingly similar. Rather, examiners will usually look at the proposed mark’s appearance, sound, meaning, or overall commercial impression.

The court in In re E. I. DuPont DeNemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563 (C.C.P.A. 1973) laid out 13 factors in determining whether a proposed mark may be confusingly similar to an existing mark. These factors include:

    1. The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.
    1. The similarity or dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use.
    1. The similarity or dissimilarity of trade channels. This includes established as well as likely new trade channels.
    1. The conditions and buyers to whom sales are made. Is this a cheap item which buyers will not pay too much attention to when purchasing it, or is it an expensive item. Buyers tend to spend more time examining and understanding expensive items.k
    1. The fame of the prior mark. How famous is the existing registered mark.
    1. The number and nature of similar marks in use on similar goods. Essentially this looks at whether the market is crowded with that type of name. For example, a lot of hotels in Florida have the word Sun or Sunny, thus making that word weak.
    1. The nature and extent of any actual confusion. This would require surveys and actual evidence of confusion or potential confusion.
    1. The length of time during and conditions under which there has been concurrent use without evidence of actual confusion.
    1. The variety of goods on which a mark is or is not used
    1. The market interface between applicant and the owner of a prior mark ….
    1. The extent to which an applicant has a right to exclude others from use of its mark on its goods.
    1. The extent of potential confusion
    1. Any other established fact probative of the effect of use.

In re E. I. DuPont DeNemours & Co., Patent Appeal No. 8866, 1361 (C.C.P.A. 1973).

When assessing whether a proposed trademark is confusingly similar to an existing or pending mark, the USPTO considers a variety of the DuPont factors. While no single factor is conclusive on its own, the overall strength of each factor is evaluated in determining whether a confusingly similar rejection is warranted. If one factor is particularly compelling, it may significantly influence the decision to reject the proposed trademark.

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