Trademark infringement is the unauthorized use of a trademark that creates confusion within the marketplace.
By Desirée Townsend
One of the most important reasons for running a trademark clearance search is to know the risk of potentially infringing on the rights of another owner by using a similar or slightly similar trademark that creates confusion amongst consumers within the marketplace.
Trademark owners can take legal action against a third party if they believe their trademark is being infringed upon. One of the guiding principles the USPTO uses to determine if a trademark application can move forward to registration is an assessment known as "Likelihood of Confusion."
When a trademark application is reviewed at the USPTO, they are assessing the potential of consumers confusing your trademark for another trademark that is either registered or a currently pending application (filed prior to you) at the USPTO. If your trademark is confusingly similar to another trademark and the goods or services are related, consumers are more likely to mistakenly believe these goods or services come from the same source.
This is the most common reason for the USPTO refusing registration on trademark applications.
Trademarks do not have to be identical to be confusingly similar. See the USPTO's article on Likelihood of Confusion for examples. They can just be similar in the pronunciation (sound), in how they look (appearance), or in the overall meaning or translation to create a similar commercial impression.
Likelihood of confusion is determined on a case-by-case basis at the USPTO by applying factors set forth in In re E.I. du Pont de Nemours & Co which are now commonly referred to as the “DuPont Factors.”
Although not all DuPont factors may be relevant, the first two are the key considerations in any likelihood of confusion analysis at the USPTO:
The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression.
The similarity or dissimilarity and nature of the goods . . . described in an application or registration or in connection with which a prior mark is in use.
The similarity or dissimilarity of established, likely-to-continue trade channels.
The conditions under which and buyers to whom sales are made, i.e. "impulse" vs. careful, sophisticated purchasing.
The fame of the prior mark.
The number and nature of similar marks in use on similar goods.
The nature and extent of any actual confusion.
The length of time during and the conditions under which there has been concurrent use without evidence of actual confusion.
The variety of goods on which a mark is or is not used.
The market interface between the applicant and the owner of a prior mark.
The extent to which applicant has a right to exclude others from use of its mark on its goods.
The extent of potential confusion.
Any other established fact probative of the effect of use.
To lower your risk of trademark infringement claims, and also increase your probability of getting a trademark through to registration at the USPTO, it is important to run a trademark clearance search before launching a new brand into the market.
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