I wish I could tell you not to worry – that it will probably all work out.
But that wouldn’t be realistic (and lawyers are nothing but realists, you know).
The truth is nearly half (48.3%, to be precise) of all trademark applications filed with the USPTO will be rejected. That puts the U.S. at the lowest success rate for successful trademark registrations compared to any other country.
So your concern is justified, but it also doesn’t mean you should throw away any hope of having a successfully registered trademark.
You can arm yourself with the knowledge of why the USPTO might refuse your ™ registration.
And how to prevent that from happening.
**Just before we dive in: this post is legal education and information, not business, financial, or legal advice, and it doesn’t create an attorney-client relationship between us.
This is also an attorney communication under Rule 7.2 of the Rules of Professional Conduct of the State Bar of California and Business and Professions Code Sections 6157-6159.2.
Please chat with an attorney in your area to make sure you’re protecting your business.**
The #1 reason your trademark registration application may be refused
I have 3 words for you:
That is the #1 reason your trademark registration application may be refused.
A likelihood of confusion means exactly what it sounds like…
It’s likely that consumers will confuse the mark with an existing registered trademark or a mark with a pending application that has an earlier filing date than yours.
How a “likelihood of confusion” is determined
An Examining Attorney at the USPTO’s office will determine if a likelihood of confusion exists using the DuPont Factors to guide them.
(The DuPont Factors originated after a landmark case in 1973, E.I. DuPont de Nemours & Co. v. Celanese Corp., and have since become the most important consideration when it comes to trademark application analysis.)
There are 13 DuPont Factors in total.
These 2 are given the most consideration:
- The similarity or dissimilarity of the marks in their entirety as to appearance, sound, connotation, and commercial impression.
- The relatedness of the goods or services as described in the application and registration(s). TMEP Section 1207.01.
In short, the more similar the two marks are, the less related the goods or services have to be to support a finding of likelihood of confusion [see TMEP Section 1207.01(a)].
And if two marks are identical – or nearly identical – the respective goods or services don’t need to be as close to find a likelihood of confusion.
Other DuPont Factors to consider
As I mentioned, there are 13 DuPont Factors in all.
I’d recommend you also consider the following if they’re applicable and relevant to your situation:
- The similarity 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 [see TMEP Section 1207.01(d)(vii)]
- The number and nature of similar marks in use on similar goods [see TMEP Section 1207.01(d)(iii)]
- The existence of a valid consent agreement between the applicant and the owner of the previously registered mark [see TMEP 1207.01(d)(viii)]
- Fame of the prior mark
- Nature and extent of any actual confusion
- Concurrent use without evidence of actual confusion: length of time and conditions
What likelihood of confusion looks like
Every (good) trademark attorney in the world will tell you to conduct a knockout search to look for any likelihood of confusion.
When you do that, you want to make sure you’re searching for variations of your mark.
You’re looking for anything that could be confused with your mark, such as:
-Spelling something slightly different and creating a phonetic equivalent (like E-Z versus easy)
-Separating the words (or putting them together)
-Adding a definitive article like “the” or “a”
-Making the word plural (or nonplural)
-Adding or subtracting a letter
Some examples of actual USPTO refusals include:
SPARK LIVING vs. SPARK
SPARK LIVING received a refusal to register their mark for “leasing of residential real estate; residential real estate listing; residential real estate service, namely, residential rental property management; specifically excludes commercial property and office space.”
The Board found a likelihood of confusion with the registered mark SPARK for brokerage, leasing, and management of commercial property, offices, and office space.
FREEDOM X vs. OXLIFE FREEDOM
The USPTO refused to register the mark FREEDOM X, in standard character and stylized forms, for “cannulas for oxygen concentrators for medical applications” because of a likelihood of confusion with the registered mark OXLIFE FREEDOM for “oxygen concentrators for medical applications.”
The Board found the goods to be related and complementary since “cannulas for oxygen concentrators for medical applications are necessarily used with oxygen concentrators for medical applications – at the same time, by the same consumers.”
BLACK ICE vs. BLACK ICE
BLACK ICE for coffee beans was refused on the grounds that it’s confusable with BLACK ICE for alcoholic beverages.
In case you’re getting discouraged, here’s a great example of when the likelihood of confusion doesn’t apply.
(Despite the fact that the marks are identical.)
DELTA (airline) vs. DELTA (faucets)
Same name. Yet both are protected under federally registered trademark laws.
How can that be?
Because a consumer is highly unlikely to confuse their bathroom sink with an airplane.
Other potential reasons your trademark registration could be refused
A likelihood of confusion may be the #1 reason, but it isn’t the only reason why your trademark registration could be refused.
Other reasons include:
- Descriptiveness: A mark that’s considered merely descriptive of the goods or services (these directly describe a characteristic, quality, function, or feature of the product or service).
- Geographical Descriptiveness: A mark that consists of only geographic names or terms that primarily indicate a geographic location.
- Failure to function: A mark that consists of common, everyday expressions, widely used terms, or generic phrases that consumers are unlikely to perceive as a brand identifier.
Note: This is by no means an exhaustive list.
Reduce the odds that your trademark registration will be refused
By knowing what to watch for, you’re a lot less likely to submit a trademark application that will be refused.
But your absolute best bet to get your application in the 51.7% of applications that are approved by the USPTO is to work with a trademark attorney.
Reach out if you’re ready to register yours.
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