Your Trademark Must be More than Just Unique

When it comes to registering trademarks with the United States Patent and Trademark Office (USPTO), your trademark application has to be unique in order to be approved. Most people looking into trademarks already know this – you can’t register a trademark for your new business called “McDonald’s” when an identical one is already registered. This is why one of the best things you can do before applying for trademark registration is searching online to see if anyone else has already registered your trademark for another company.

What most people may not realize, however, is that your trademark a unique name does not guarantee approval.  

One of the most common reasons that the USPTO rejects trademark applications is due to Likelihood of Confusion. This means that there is a high chance that someone will confuse your trademark with another trademark that is already registered, even though it is not identical to yours.

Let’s say your company sells a brand of stain remover spray for doing laundry under the “Wash N’ Spray.   You search online and see that no one else has trademarked the name “Wash N’ Spray”.  You  submit your trademark application to the USPTO.

Your application would ultimately get rejected for Likelihood of Confusion because consumers will confuse “Wash N’ Spray” with the already trademarked “Spray N’ Wash”.

Examples of “Likelihood of Confusion”

Sounding similar is a big reason to get flagged for Likelihood of Confusion, as Intelect once was by the existing trademark Entelec. They look plenty different on paper, but they sound the same out loud.

There are plenty of other factors as well:

  • looking similar (Newports and Newport,)
  • meaning similar things (Pledge and Promise,)
  • having a similar logo (Ocean Spray and Ocean Gardens – you can imagine what the logo was,)
  • feeling like the same thing (Maternally Yours and Your Maternity Shop.)

The USPTO also takes into consideration the similarity of the actual product or service being sold when deciding Likelihood of Confusion.  This is why we have Dove chocolate and Dove soap or Delta faucets and Delta airline.  Most people will not assume that Delta airline is also selling faucets.

Responding to a Likelihood of Confusion

There are various strategies to reduce the risk of a denial and to respond to a Likelihood of Confusion denial.

  • Change your name (this is a great option if you have not yet launched the business or product)
  • Argue that the products or services are different (remember Dove chocolate v. Dove soap)
  • Convince the owner of the registered trademark to allow you to use the trademark in certain geographies or for a certain services or products
  • Argue that the registered trademark is weak and should be narrowly protected for a specific service or product or for a specific location
  • Ask the USPTO to cancel the registered trademark (this is very expensive, takes a long time, and does not always succeed)

Let Us Help You

As you can tell, trademark registration is more complicated than simply looking for the exact same trademark. You should partner with a dedicated trademark lawyer to register yours, since they will know exactly what to look for. You don’t want to get rejected on your own and then have to hire a lawyer for the second application!

At Concerto Law, we can help you protect your brand, build customer loyalty, and monetize through trademarks. We have dealt with Likelihood of Confusion matters before and we know what to look for before we apply.  Don’t go it alone.  Contact Concerto Law today if you are ready to start building your brand