Likelihood of Confusion is one of the main reasons why your trademark application may get denied by United States Patent and Trademark Office (USPTO), the Federal agency in charge of registering trademarks. In simple terms, likelihood of confusion just means that there is another business out there with similar product or service to your own, which also happens to have a similar name to your own business. Name does not need to be identical, but close enough where a third party that is not familiar with either business, may confuse the two businesses with each other.
The question of likelihood of confusion between marks is “related not to the nature of the mark but to its effect when applied to the goods of the Applicant. The only relevant application is made in the marketplace. The words when applied do not refer to a mental exercise, but to all of the known circumstances surrounding use of the mark.” In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 1360-61 (C.C.P.A. 1973).
In determining whether there is a likelihood of confusion, courts look to many factors, including:
- The number and nature of similar marks in use on similar goods or
services; - The similarity or dissimilarity and nature of the goods or services such
that one party’s goods will be mistaken for those of the other party; - The channels of distribution of the goods or services;
- The sophistication of the purchasers of the goods or services;
- The similarity or dissimilarity of the marks in their entirety; and
- The nature and extent of any actual confusion.
For goods to be ” related ” for purposes of a likelihood of confusion analysis, they must be related in some specific manner or the conditions surrounding their marketing must be such that the goods would be encountered by the same consumer under circumstances that give rise to the mistaken assumption that they originate from the same source. See In re Total Quality Group, Inc., 51 U.S.P.Q.2d 1474 , 1476 (T.T.A.B.1999); TMEP § 1207.0 l (a)(i). This is true even in cases where two marks are identical. TMEP § 1207.1(a)(i) (citing, e.g., Local Trademarks, Inc. v. Hand y Boys, Inc., 16 U.S.P.Q.2d 1156 (T.T.A.B.1990) (LITTLE PLUMBER for drain opener not confusingly similar to LITTLE PLUMBER and Design for advertising services).
In determining whether there is a likelihood of confusion between marks, the overall impression in commercial context made by each mark is determinative, not whether the marks share a component. See, e.g., Pacific Sunwear of California, Inc. v. AIT, Inc., 2004 TTAB LEXIS 76 (T.T.A.B. Feb. 18, 2004) (PAC SUN and PAC AIT are different in overall commercial impression and not confusing). As indicated, there is also absence of actual confusion, See Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB 1992).
