Considerations regarding Trademark confusion

1. When seeking to register a trademark in the US, you will not be able to secure a registration if a prior filed or registered trademark belonging to another applicant already exists with the US Patent and Trademark Office (USPTO). This is to avoid what is known as “trademark confusion” amongst consumers.
2. Even if you don’t apply for a trademark registration and opt instead for a common law trademark, you may be at risk of infringing on your competitor’s trademark if your competitor used or filed a trademark application for a confusingly similar trademark in the US before you started using the trademark in the US.
3. After you file your trademark application with the USPTO an examiner will assess the trademark application to determine whether it fulfills the requirements for registration. If the examiner believes that your trademark application is confusingly similar to a prior filed trademark application, he/she will suspend your trademark application until the prior filed trademark application is either abandoned or registered. If the examiner believes the trademark to be confusingly similar you will receive an office action in which they refuse your application based on confusion. You will be able to respond to this office action to dispute the examiner’s assessment.
4. In the event that the USPTO approves your trademark application, either because they did not find any prior similar trademarks or you were able to overcome a confusion objection, a competitor may still oppose your trademark application in the 30 days following advertisement and file arguments/proof that your trademark is confusingly similar.
5. How is “confusion” assessed in the US? If two marks are similar enough and the types of goods/services to which they are applied are related in such a way that it is likely that consumers could mistakenly believe they come from the same source.
6. When assessing whether the likelihood of confusion between two trademarks exists, an examiner will evaluate both marks for similarities and differences in 3 areas – how they sound when spoken, their visual similarities, and their overall commercial impression to consumers. Marks do not need to be identical to be found to have a high likelihood of confusion.

   Example 1: In 2005, Palm Bay Imports failed to obtain a trademark registration for the name VEUVE ROYALE as the name for their sparkling wine. Because a trademark already exists for VEUVE CLICQUOT (registered by Veuve Clicquot Ponsardin) and applies to a similar class of goods and services, the court ruled that the existence of VEUVE ROYALE as a trademark is likely to cause confusion, noting that the presence of the "strong distinctive term VEUVE as the first word in the marks renders the marks similar, especially in light of the largely laudatory significance of the word ROYALE.”

   Example 2: In a case between Hewlett-Packard Company and Packard Press Inc., the court determined that the existing registration for Hewlett Packard trademark and trademark application for PACKARD TECHNOLOGIES conveyed similar commercial impressions despite the fact that “each mark uses PACKARD in a slightly different context.” The Court ruled that because the goods and services of both parties "appear to be at least tangentially related," the marks were deemed sufficiently similar as to promote a likelihood of confusion.

   Example 3:  The two marks below would likely be found to be confusingly similar because they provide the same commercial impression, even though one trademark is accompanied by clear text.

   
7. To register a trademark, applicants must indicate the goods and/or services on which they use or intend to use their trademarks. This is also extremely influential in assessing the likelihood for confusion. It is possible to have similar or identical trademarks co-exist if the industries and goods and/or services for which they are used are sufficiently different so that there is little chance they will be confused or thought to come from a common source. 

   Example 4: DOVE is a trademark used by Unilever on soap and personal care products. A trademark for DOVE is also registered by Mars Incorporated in relation to a brand of chocolate that they sell. Both applicants were able to secure their respective trademark rights because they operate in different industries.

   Example 5: MORTON’S for wheat crackers and honey bread, and MORTONS for cheese, are likely to cause confusion as they are both applied to related food products.

8. There are several other conditions to consider when assessing for likelihood of confusion:
   • The similarity or dissimilarity of established, likely-to-continue trade channels. For example: baby products and cement have entirely different trade channels and customers.
   • The conditions (impulse vs careful sophisticated purchasing) under which purchasing decisions are made and the buyers to whom those sales are made (E.g. a decision as important as choosing a senior living community will be made with some thought and research so potential consumers are able to differentiate the similar marks and are not likely to be confused).
   • The number and nature of similar marks in use on similar goods. When many similar marks for similar goods exist (e.g. “Smoking Hot” for cosmetic products) consumers learn to differentiate the different marks so that they are less likely to be confused.
   • The existence of a valid consent agreement between the applicant and the owner of the previously registered mark. These consent agreements are not binding upon the trademark examiner but should be give substantial weight in their assessment. Make sure to involve your US trademark attorney when drafting the consent agreement to ensure it is proper and complete.
9. A trademark that is highly suggestive of the goods and services with which it is used (e.g. Golf City for golf)) or trademarks that are used very commonly may be subject to a narrower scope of protection than an entirely arbitrary or coined word (e.g. Apple, used for software, phones, laptops, etc., is an arbitrary word and “Kodak” is a coined word). Such a weak mark may be entitled to trademark protection only against the registration of a similar mark for closely related goods or services.

   Example 6: Trademarks using the word “KING’S” (KING'S used on candy and MISS KING'S on cakes) were deemed to be not confusingly similar. There are many trademark applications and registrations including variations on the word King in the field of food. Therefore, the scope of protection for a trademark for “King’s” is very limited (i.e., KING’S would have been confusingly similar with MISS KING’S only if both trademarks were used on just candy or cakes).

Key considerations for Canadian companies regarding trademark confusion when registering in the US:

• Prior to establishing your brand name, review whether your trademark is available in your jurisdictions of interest by doing online searches and through trademark databases. By doing this, you can eliminate the need for a future rebranding in case you are infringing on an existing trademark.
• When coming up with your brand name, select a one that is as distinctive as possible. A distinctive brand name will provide you with a larger scope of protection and it reduces the risk of there being prior confusingly similar trademarks.
• According to Kim Capiau, Registered Trademark Agent at Stratford Intellectual Property, “Your brand is valuable and allows people to distinguish your products and services from those of others. Coming up with a distinctive brand name after clearance searching, allows your brand to become valuable and reduces the chance of losing revenue ”.

Additional information:

• For information about IP protection in the US, please see the Canadian Intellectual Property Office’s publication on Doing business abroad: Protecting your IP in the United States
• For more material relating to the export of goods to the US, please see the Doing Business in the United States page
• For more information on going global with your IP, visit Canada.ca/export-ip
• The US Trademark database is available at uspto.gov/trademarks/search