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What is a “likelihood of confusion” between two trademarks?

Posted by ipelton on: August 25th, 2010

The USPTO will refuse registration of a trademark application if the mark is “likely to be confused” with a registered trademark. But what is a “likelihood of confusion”? The two key, but not exclusive, considerations are generally the similarity between the two trademarks and the similarities between the goods or services.  When comparing two trademarks, the words are usually far more important than the designs. When comparing goods and services, they need not be identical or overlapping to be similar or related – if they could be sold in the same types of stores, or advertised near to each other (such as at an industry trade show or in an industry publication), then they might be similar.

So, how does this play out at the USPTO? Here is an actual recent case:

Applicant (full disclosure, a client of Erik M. Pelton & Associates) filed to register the words “Wish you were here” for use with “underwear.”  The USPTO attorney refused registration due to a conflict with Registration No. 3129654 for the following design used with “womens dresses, shirts, skirts and apparel”:

The Applicant is automatically provided at least one opportunity to respond to the refusal. The response filed by Applicant in this case did not convince the USPTO to withdraw the refusal, and an Appeal was filed to the Trademark Trial and Appeal Board (TTAB).  Following briefs from the Applicant and the USPTO examining attorney, as well as an oral argument before a panel of three judges, the TTAB determined that there are strong differences between the marks as the larger lettering “Love, Jetsy” is the dominant element in the registered trademark, and the lack of evidence presented to show that underwear and outer clothing are closely related goods even though they are related. As a result, the TTAB reversed the refusal to register the “Wish you were here” trademark.

Note: The application for “Wish you were here” was filed in July 2007.  The TTAB decision was issued last week, more than 3 years later – and the registration process is still not complete as the application must now be published in the public record before it can be registered. And here, the TTAB issued its opinion less than a month after the oral hearing – much more speedy than usual. Obtaining a trademark registration can be a long process!

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