Likelihood of Confusion
Likelihood of confusion exists between trademarks when there’s a strong chance consumers will confuse the source of goods/services. The offerings must be related and the trademarks must be similar in order for likelihood of confusion to be present. This is a concept that can be, well, confusing. We’ve broken it down below.
This article will cover:
Why Does Likelihood of Confusion Matter?
Likelihood of confusion matters greatly when it comes to federal trademark registration as well as infringement cases.
- Likelihood of confusion and registration
When a trademark application is submitted to the United States Patent and Trademark Office, it goes through a rigorous examination process. Part of this examination is spent figuring out if a likelihood of confusion exists between the pending application and other federally registered trademarks (or pending applications with earlier priority dates). If a likelihood of confusion is found, the USPTO will issue a registration refusal (office action) that may not be possible to overcome.
- Likelihood of confusion and infringement
Likelihood of confusion is the main consideration in a trademark infringement case. When one mark owner claims that another is infringing on their rights, determining whether there’s a likelihood of confusion is the primary test when settling the matter.
Our Trademark Service includes a clearance search, which helps determine whether a likelihood of confusion exists between your mark and others.
Likelihood of Confusion Factors
Likelihood of confusion between trademarks arises when numerous factors align, leading to probable consumer confusion regarding the source of goods/services.
When assessing likelihood of confusion, the consumer perspective is important. If the consumer isn’t likely to be confused, then a likelihood of confusion doesn’t exist.
But how is likelihood of confusion determined? Like pretty much everything in the legal world, relevant factors are applied case-by-base.
During the registration process, the USPTO focuses their analysis on the similarity of marks and the similarity of goods/services when deciding if likely confusion exists. But if needed during registration, and during infringement cases, additional factors are considered. Many of these factors are detailed below.
Similarity of Marks
Similarity of marks refers to how alike multiple trademarks are. These similarities are primarily assessed in the following areas:
Trademarks can look confusingly similar even if there are differences between them. If one brand used the trademark Root Edition without any particular design, and another brand used Root Edition in a stylized font, they could still be confusingly similar.
When marks sound the same aloud, they can be confusingly similar. For example, marks such as Root Edition and Route Addition sound confusingly alike, since their pronunciations overlap.
When the meaning of marks is similar, there can be a likelihood of confusion. Route Addition and Road + could be confusingly similar because their meanings converge.
- Commercial Impression
Commercial impression considers the overall impact and image of a mark in the eyes of consumers. If Route Addition utilizes a graphic of a winding road in its logo, and that same winding road is the primary image in another brand’s logo, they may give off confusingly similar commercial impressions.
Similarity of Goods
Similarity of goods compares the products and/or services sold in connection to different trademarks.
At it’s most basic, similarity of goods works like this:
- If similar marks represent related goods, confusion is more likely.
- If similar marks represent unrelated goods, confusion is less likely.
For example, if Root Edition sells books and plants, and Route Addition is a cafe, then the goods/services are different enough that likelihood of confusion shrinks. But if Root Edition also has a smoothie bar, then confusion may arise since both trademarks promote restaurant services.
As a general rule, the more goods/services (organized by classes) a brand is trademarked in, the more likely the confusion if a similar trademark enters the scene. Why? A consumer could reasonably assume a company that already sells a variety of products could easily add another good/service to its repertoire.
Strength of Marks
Mark strength looks at how distinct or descriptive a trademark is. Distinct marks tend to be stronger, while descriptive marks are typically weaker.
Weaker marks can have a hard time proving likelihood of confusion in infringement cases unless they’ve acquired “secondary meaning.” (Secondary meaning occurs when a descriptive mark has been used so pervasively that consumers now distinctly associate it with the brand.)
Mark strength breaks down into the following categories:
Generic marks say exactly what’s being sold. For example, a plant and book store called Plants and Books. Generic marks cannot be federally trademarked.
Descriptive marks describe what’s being sold, though with less specificity than generic marks. The USPTO considers a mark “merely descriptive” if it describes a good or service’s function, feature, purpose, use, quality, characteristic or ingredient. For example, a plant and book store called Page and Leaf.
Suggestive marks imply what’s being sold without saying it directly. For example, a plant and book store called Root Edition.
Arbitrary marks don’t inherently relate to what’s being sold. For example, a plant and book store called Sunday Scaries.
Fanciful marks are entirely made up. For example, a plant and book shop called Okob.
Intent of Trademark Owner
Did a trademark owner intend to confuse the public with their mark? If so, this may work against them.
Let’s say Root Edition existed for years before Route Addition popped up in the same region selling similar things. Consumers could likely confuse the two, and it wouldn’t be a far leap to assume that this confusion was Route Addition’s intent.
Yet while intent can be an important factor in an infringement case, it can be tough to prove. One might assume Route Addition had bad intentions, but it may not matter if it can’t be supported by evidence.
Consumer Care and Attention
How much attention and care a consumer gives a purchase impacts whether there’s likely confusion between marks.
- Likelihood of confusion can be hard to prove in relation to high-cost sales.
When consumers buy more expensive items, they generally do so with a lot of thought and intention. Because of this, they’re less likely to be confused as to the source of goods/services.
- Likelihood of confusion can be easier to prove in relation to low-cost sales.
If goods/services are inexpensive and are typically purchased with minimal thought, confusion can be more likely. Since consumers are purchasing impulsively, similar marks can interrupt their ability to make an informed decision about which brand to buy from.
Likelihood of Confusion FAQs
Will conducting a clearance search help find any likelihood of confusion?
Conducting a thorough clearance search will help reduce the risk that the USPTO will find instances of likelihood of confusion during your mark’s examination. However, successful clearance checks require a fair amount of knowledge and research. Even if your search comes back clean, it doesn’t mean the USPTO’s will. You may find more success if you hire an experienced trademark attorney to conduct the search for you.
Will trademark monitoring reveal instances of likelihood of confusion?
Yes. Trademark monitoring is the process of regularly searching websites and databases to discover if marks like yours have entered the marketplace. Frequent and thorough monitoring will help discover likelihood of confusion.
How can I avoid likelihood of confusion?
The best ways to avoid likelihood of confusion include choosing a strong trademark and conducting a well-rounded clearance search. Of course, these methods won’t prevent newer marks from cropping up and causing confusion with yours. You’ll need to consistently monitor for similar marks in order to catch infringement.
What if I disagree with the USPTO’s likelihood of confusion refusal?
If the USPTO issues a refusal based on likelihood of confusion, you may be able to overcome it. For example, you may be able to provide legal arguments and evidence that prove why there isn’t likely confusion. Or, you might be able to prove that the confusingly similar mark is no longer active. Depending on your situation, more options may be available. However, none of the routes are simple—you will likely need an attorney’s help to overcome such a refusal.
It is not always possible to overcome likelihood of confusion once it’s discovered by the USPTO. In such instances, you may need to choose a new trademark.
*This is informational commentary, not advice. This information is intended strictly for informational purposes and does not constitute legal advice or a substitute for legal counsel. This information is not intended to create, nor does your receipt, viewing, or use of it constitute, an attorney-client relationship. More information is available in our Terms of Service.