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“Likelihood of Confusion” Can be Confusing


Legal terms can be confusing especially if they have the term “confusion” in them. “Likelihood of confusion” is one such legal jargon. This is an important concept to understand for those that are developing a brand strategy, looking for brand names, have filed a trademark application or even those that have a registered trademark. Entrepreneurs often come up with innovative and clever names for their brand. But you’ll be surprised at how many people have the same or similar thoughts around names. More often than not, someone else has already thought of that name and acted on it by filing a trademark application. The first to file secures a trademark registration and in order to avoid trademark infringement, your name cannot be confused with the registered brand name or a name similar to the registered brand name. So then how is MILK & HONEY registered by 2 different companies – 1 for bar services and the other for jewelry? Confused much?

Here, I discuss instances where the same mark can be registered by 2 different companies and when there can be a potential likelihood of confusion rejection for the same or similar names.

Let me start by explaining what likelihood of confusion is. When a brand name is identical or so similar to a mark or marks already registered or pending before the USPTO that it is likely to conflict with or cause confusion in the marketplace among consumers, the USPTO or a registered trademark owner can raise a likelihood of confusion issue. The principal factors considered are: (1) the similarity of the marks; and (2) the commercial relationship between the goods and/or services listed in the application.

To find a conflict, the marks don’t have to be identical, and the goods and/or services do not have to be the same. It may be enough that the marks are similar and the goods and/or services related. For example, consider a hypothetical scenario in which CANDY CANE, a restaurant chain, has a registered trademark in their name, and a medical equipment company called CANDY CANE applies for their own trademark. Applying the two major factors, the two marks are identical in their spelling. They also sound the same, because they are, in fact, identical words. However, as to the second factor, the goods and services offered by the two companies are completely unrelated, as one offers restaurant services, and the other sells medical equipment. Even though the names themselves are essentially identical, the fact that the goods and services offered by the two companies are not at all related could weigh in favor of CANDY CANE being registered for medical equipment.

Another aspect to consider is the spellings. Likelihood of confusion doesn’t mean it has to be similar in exact words. A search needs to be conducted for alternative spellings or even sounds. So for example, if you are looking to register the mark CANDY CANE, you must also search CANDI, CANDIE, KANDY, KANDI and KANDIE as well as KANE. Any of those variations could potentially be determined as likelihood of confusion.

Bottom line is that a basic search is not enough when you’re developing a brand strategy and exploring brand names. A likelihood of confusion trademark rejection is intimidating, and certainly does not help ease the tension that entrepreneurs face. It is important to realize, however, that even if a mark is initially rejected, it does not mean the end of the road for that name. In many cases, there are options and ways to overcome the rejection.

At Nupur Shah Law, we help with trademark strategy, applications and prosecution. We help with reviewing your work and determining the best possible protection available to you. Call us at 646-820- 1366 or email us at nupur@nupurshahlaw.com. I am happy to have a complimentary conversation with you on how to secure your rights.


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