Can two businesses have the same trademark? (Understanding Likelihood of Confusion)

Trademark Law0 comments

You found your trademark registered for another business, so all hope is lost, and you’re about to face a frustrating rebrand, right?

Not necessarily.

If the exact same trademark is registered for goods and services that are different from yours, you could actually still be in the clear.

How does that work?

It works because of 3 magic words in Trademark Law:

Likelihood of Confusion

**But 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.**

What is “Likelihood of Confusion?”

Your trademark is a unique identifier for goods or services that allows your customers to know at a glance that the deliverables they’re getting are coming from you.

A “Likelihood of Confusion” occurs if your trademark is confusingly similar to another trademark and the goods and services are related. 

In that case, consumers would likely mistakenly believe that the related goods and services are from the same source. 

And trademarks that exist in the same International Classes don’t even have to be identical to be considered confusingly similar.

How is a “Likelihood of Confusion” determined?

Technically, 13 factors, known as the DuPont Factors, can be used to determine whether a Likelihood of Confusion exists.

But there are 2 predominant factors an Examining Attorney (EA) will use:

DuPont Factor 1. Similarity or dissimilarity of the marks in their entireties for appearance, sound, connotation, and commercial impression.

This refers to the fact that the EA has to compare the marks in their entirety.

Meaning they cannot dissect the marks and compare only their parts.

For example

Let’s say your mark is WHITE FROST for lipstick and another mark exists for WHITE ICY, an eyeshadow.

The EA can’t just focus on WHITE in deciding if a likelihood of confusion exists. 

(But when the marks share the same first term, it’s more likely to make an impression on consumers, which the EA will consider in their analysis. )

Now, your mark for WHITE FROST also features an icicle design. 

That might not matter much because it’s important to note that word components of trademarks generally dominate over design elements. 

And to take it a step further, when one of the marks is a word mark, the registration covers all forms of the mark (in any font, color, size, etc.). 

So if the other mark being compared is a design mark that features the same words AND also features design elements, those design elements probably aren’t enough to distinguish the marks. 

Going back to our example – if your mark was WHITE ICY with an icicle design and there was another registration for the word mark WHITE ICY for the same or similar/related goods or services, the EA is probably going to find that a Likelihood of Confusion exists.

Irrespective of how cute your icicle design is.

DuPont Factor 2. 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 used.

When the parties’ goods or services are closely related, a lesser degree of similarity of the marks may be enough for the EA to find a Likelihood of Confusion exists.

For example

Both marks are for makeup products in our WHITE FROST for lipstick and WHITE ICY for eyeshadow example.

Even though the second word in each mark is different, they both give the impression of winter. 

And if you were shopping in Ulta, you’d likely think that the same company sold these products. 

But if WHITE FROST were lipstick and WHITE ICY were teeth-whitening services, the distinction would be less clear-cut.

The EA would then have to consider whether the goods or services are sufficiently related in consumers’ minds to cause confusion concerning their source or origin. 

As you may have already guessed, a lot of this analysis centers on the International Classes (ICs) you choose in your trademark registration application.

The role International Classes play in determining Likelihood of Confusion

In the US, you can file a trademark registration application with the United States Patent and Trademark Office (USPTO) in 45 different classes.

Classes 1-34 are goods.

Classes 35-45 are services.

(You can search your goods or services to see what classes they fall into with suggested descriptions in the Trademark ID Manual.)

But here’s the thing:

When an EA reviews your trademark registration application to see if a likelihood of confusion exists with any registered marks or applications filed before yours, they look at not just the classes you selected when you filed your application.

They also look at coordinated classes.

For example

If you file for clothing such as T-shirts and hats in Class 25, the USPTO found that it’s likely you’ll also file for jewelry in Class 14. 

This is coordinated classes at work. 

Coordinated classes can give some guidance as to whether a similar trademark – but in a different class – might cause problems with your application reaching registration. 

It’s likely that if a similar trademark is in a coordinated class, the similarity of the trademarks will raise concerns with the EA.

You can avoid a lot of the headaches all of this will cause by doing a knockout search BEFORE you launch any product or service. 

But now you also know that just because you don’t find an exact match, it doesn’t mean it’s safe to proceed. 

It means it’s time to chat with an attorney about doing a comprehensive search. 

Because as the Dupont factors we covered above demonstrate – you also have to consider the legal analysis by an Examining Attorney. 

So it’s always better to look before you leap so you don’t waste time and money on filing feeds and you avoid being on the receiving end of a cease and desist letter.

Likelihood of Confusion in the wild

Here’s a great real-world example for you:

A company filed a trademark application for BLACK INK in class 30 in connection with “Coffee beans; Roasted coffee beans; Coffee-based beverages; Ground coffee beans; Green coffee; Unroasted coffee; coffee pods; coffee in pouches for brewing.”

When the EA reviewed their application, they cited a registration for BLACK INK in class 33 in connection with “Alcoholic beverages except beers; Wines.” 

That was the basis for finding a likelihood of confusion and refusing registration. 

The Examining Attorney provided 15 third-party registrations covering coffee beans and alcoholic beverages to support their position. 

Now, you might be wondering who in their right mind would confuse coffee beans with alcoholic beverages.

(Coffee-flavored Kaluha notwithstanding.)

But that’s just the DuPont Factors, Coordinated Classes, and Likelihood of Confusion in the wild.

Want to avoid the confusion, of well, Likelihood of confusion? Get in touch.

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I’m Nicole.

I understand both the legal world and the online business world and can bridge the gap for entrepreneurs that want to ensure all of their ducks are in a nice, neat row. Let’s protect your business so you can build your empire.

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