Understanding the concept of “likelihood of confusion” is important not only in registering your mark, but also in monitoring for possible infringement both before and after your mark registers.
Diving deeper, remember that one purpose of a mark is to help consumers distinguish one company’s goods/services from those of the rest of the market, such that consumers are protected from buying a good/service they do not intend to buy. Another purpose is to reduce unfair competition by protecting a mark owner’s investment in its mark (and the goodwill with consumers generated by that investment) from being exploited by competitors.
For example, Apple owns and uses the “iPhone” mark to help distinguish its smartphones from competitor’s smartphones. If another company was permitted to brand its phones as “iPhone” (or a mark confusingly similar to that one), reasonable consumers might be confused about who was the source of a given “iPhone” and might unintentionally buy the “wrong” product. That would not only harm consumers but would also harm Apple due to the other company unfairly benefitting from the investment Apple made in developing its iPhone® brand.
When it comes to registering a mark with the USPTO, the best way to avoid a likelihood of confusion objection is by performing a good registrability search before applying for registration. Such searches usually identify many, if not all, registered marks and pending applications for that are “conflicting”, i.e., for which a likelihood of confusion objection reasonably could arise.
Even broader searches that uncover conflicting unregistered marks also can be beneficial, potentially helping your company avoid a “seniority” (a.k.a. “priority”) fight. This can be of vital importance, because the loser of such fights (the party who is found not to be the first user of the mark in a particular geographic region for the identified goods/services in the relevant market) might be forced to change their mark and possibly pay damages to the winner.
Your company’s mark fails the likelihood of confusion test when it is more likely than not that a reasonable consumer of the same or similar goods/services, upon encountering your company’s mark and exercising ordinary care, would be confused as to the source of those goods/services. That confusion can be manifested either by the consumer buying your company’s goods/services when they intended to buy a competitor’s or buying the competitor’s goods/services when they intended to buy yours.
Factors that probably will be considered when evaluating likelihood of confusion between your mark and a conflicting mark include:
- The similarity or dissimilarity of the marks, considered in their entireties, from the perspective of appearance, sound, meaning, and commercial impression.
- The similarity or dissimilarity and nature of the goods/services as identified in your application or registration in comparison to those bearing the conflicting mark.
- The similarity or dissimilarity of established, likely-to-continue trade channels for each mark.
- The likely carefulness and/or sophistication of the typical consumer prior to purchasing the goods/services. Those in the market for more expensive goods/services, and more sophisticated consumers, tend to be more discriminating, and less likely to be easily confused.
- The strength and/or fame of the conflicting mark (based on, e.g., sales, advertising, length of use, public recognition, etc.).
- The number and nature of other similar marks in use on/with similar goods/services.
- The length of time during which, and conditions under which, there has been concurrent use (i.e., simultaneous use of your mark and the conflicting mark in the relevant market) without evidence of actual confusion.
- The variety of goods/services on/with which each mark is used (i.e., house mark vs. “family” mark vs. single product mark).
- The nature and extent of any actual confusion.
When faced with an objection that alleges likelihood of confusion, your trademark attorney typically should work closely with your company’s IP Team to evaluate these and similar factors, to determine whether the attorney can advance a strong argument explaining why the objection is factually incorrect and should be withdrawn.
When a strong argument is not available, your trademark attorney can help the IP Team find the optimal work-around. That is, when it makes sense and to the greatest extent possible, your trademark attorney should seek a solution that preserves your company’s investment in the mark and any resulting goodwill that investment has generated.
When evaluating possible infringement of your company’s mark, the same scenarios must be considered as for registering a mark. That is, if there is a likelihood that reasonable consumers will be confused, mistaken, or deceived regarding the source, sponsorship, or approval of one party’s goods/services due to another party’s use of the same or a similar mark, then infringement might exist or arise.
If you have concerns about infringement, first talk with your trademark attorney. They can help you properly evaluate your situation and take the right steps to resolve your concerns, while guiding you away from some potentially very serious and expensive pitfalls.