There can be many reasons why the U.S. Patent and Trademark Office (USPTO) might reject your trademark application. One of the most common is “likelihood of confusion.” If the examining attorney thinks your mark is too similar to an existing registration, your application will be refused.
This is worth understanding before you file. A likelihood of confusion refusal can be frustrating, especially if you’ve already invested time and money into building a brand. I talk about why your brand isn’t legally protected without registration, and this is a big part of the reason. Here’s how it works and what you can do about it.
What Is Likelihood of Confusion?
In trademark law, likelihood of confusion means that consumers might mistakenly believe your product or service comes from the same source as another company’s. Trademarks exist to identify where goods and services come from. If a new mark is too similar to an existing one, it creates the risk that customers will be confused about who they’re actually buying from.
This doesn’t mean the marks have to be identical. Two trademarks can create a likelihood of confusion even if they look different, sound different, or are spelled differently. What matters is the overall impression they leave on consumers.
The DuPont Factors: How the USPTO Evaluates Confusion
The USPTO uses a set of criteria known as the “DuPont factors” (from the 1973 case In re E.I. du Pont de Nemours & Co.) to determine whether confusion is likely. There are 13 factors in total, but in practice, two carry the most weight:
1. Similarity of the Marks
The examining attorney compares the marks as a whole, considering:
- Sound: Do the marks sound alike when spoken? “Blu-Ray” and “BluRae” could create confusion even though they’re spelled differently.
- Appearance: Do the marks look similar? Similar fonts, colors, layouts, or design elements can contribute to confusion.
- Meaning/Commercial Impression: Do the marks convey the same idea or feeling? “Sunshine Bakery” and “Solar Bake” might trigger confusion even though the words are different.
The key point: the USPTO looks at each of these individually and together. A mark doesn’t have to be identical in all three areas to be refused. Similarity in just one area can be enough if the goods or services are related.
2. Relatedness of the Goods or Services
Even if two marks are similar, confusion is only likely if the goods or services are related enough that consumers might think they come from the same company.
For example, if someone has a registered trademark “APEX” for athletic shoes, and you want to register “APEX” for a restaurant, there’s probably no confusion because the products are completely different. But “APEX” for running shoes and “APEX” for athletic apparel would likely create a problem because those products are closely related.
The USPTO considers factors like:
- Whether the goods are sold in the same types of stores
- Whether they’re marketed to the same consumers
- Whether the goods are commonly produced by the same companies
Other DuPont Factors
While similarity of marks and relatedness of goods carry the most weight, the examining attorney may also consider:
- The strength of the existing mark. A highly distinctive or well-known mark gets broader protection.
- Evidence of actual confusion. If customers have already confused the two marks, that’s strong evidence.
- The conditions of sale. Expensive goods purchased carefully (like industrial equipment) are less likely to cause confusion than cheap impulse purchases.
- The number and nature of similar marks in use. If dozens of marks in the same field use a common word, that word gets less protection.
What to Do If Your Trademark Gets a Likelihood of Confusion Refusal
If the USPTO issues a likelihood of confusion refusal in an Office Action, you have options:
- Argue the differences. You can respond to the examining attorney with arguments explaining why the marks are distinguishable or why the goods/services are sufficiently different. Be specific, and reference the actual DuPont factors.
- Amend your application. You may be able to narrow your goods/services description to reduce overlap with the cited registration.
- Submit evidence. Market evidence, consumer surveys, or evidence of years of coexistence without confusion can support your case.
- Negotiate a consent agreement. If the owner of the cited mark agrees that confusion is unlikely, a consent agreement filed with the USPTO can help overcome the refusal.
- Appeal to the TTAB. If you disagree with the examiner’s final decision, you can appeal to the Trademark Trial and Appeal Board.
How to Avoid a Likelihood of Confusion Refusal
The best approach is to do your research before you file:
- Conduct a thorough trademark search. A comprehensive trademark search can identify potential conflicts before you invest in an application. Search the USPTO’s Trademark Electronic Search System (TESS), state databases, and common law sources.
- Think beyond exact matches. Search for phonetic equivalents, translations, and marks with similar commercial impressions, not just identical spellings.
- Consider your goods and services carefully. Even a somewhat similar mark may not be a problem if your products are in a completely different industry.
- Work with an attorney. An experienced trademark attorney can evaluate whether your proposed mark is likely to face a confusion refusal and help you navigate the process if it does. I walk through the 3 biggest mistakes brand owners make when trying to handle this on their own.
FAQs
What is likelihood of confusion in trademark law?
Likelihood of confusion is the legal standard the USPTO uses to determine whether a new trademark is too similar to an existing one. If consumers might mistakenly believe the goods or services come from the same source, the application will be refused.
How does the USPTO determine likelihood of confusion?
The USPTO uses the 13 DuPont factors, with the two most important being: (1) how similar the marks are in sound, appearance, and meaning, and (2) how related the goods or services are. The examining attorney weighs these factors based on the specific facts of each application.
Can two similar trademarks coexist?
Yes. If the goods or services are different enough that consumers wouldn’t be confused, similar marks can coexist. “Delta” is a registered trademark for both an airline and a faucet company because the products are completely unrelated.
What should I do if my trademark was refused for likelihood of confusion?
You can respond to the Office Action by arguing the differences between the marks, narrowing your goods/services description, submitting evidence of no actual confusion, or negotiating a consent agreement with the owner of the cited mark. You may also appeal to the TTAB.
How can I avoid a likelihood of confusion refusal?
Conduct a thorough trademark search before filing. Look for phonetic equivalents and similar commercial impressions, not just exact matches. Working with a trademark attorney who can evaluate potential conflicts before you file saves time and money in the long run.
Next Steps
Likelihood of confusion is one of the most common reasons trademark applications get refused, but it’s also one of the most preventable. A strong search and thoughtful brand selection go a long way.
If you’re considering a trademark application and want to make sure your mark is clear, book a consultation and I can help you evaluate your options.
