The United States Trademark Examiners will conduct an ex parte examination of an Applicant’s trademark application. When a §2(d) refusal (refusal based on a likelihood of confusion with a prior registered mark) is made by an Examiner it is usually based on the conclusion that the Applicant’s mark when used in connection with the goods or services identified in the application, resembles another registered mark to the extent that it is likely to cause confusion as to source. In the early stage of an evaluation, the Examiner focuses on the similarities between the trademarks and the relatedness of the goods or services. The similarity analysis is discussed on our web page entitled Similarities In Trademarks. Also, see our blog post entitled TTAB Finds Water And Wine Related Goods Under Likelihood Of Confusion and our other blog posts on the subject of likelihood of confusion.
In evaluating the relatedness of goods or services, the more similar the trademarks are, the less related the products or services need to be to cause a probability of confusion. This principle was demonstrated in In re Shell Oil Co., 992 F.2d 1204, 1207, 26 U.S.P.Q.2d 1687, 1689 (Fed. Cir. 1993). Goods or services do not have to be the same or even competitive and still there can be a likelihood of confusion. To learn about the trademark law legal standard known as Likelihood Of Confusion, see the Trademark Manual of Examining Procedure §1207.01.
The Examining Attorney has the burden to provide evidence showing that the goods and services are related when refusing the trademark application based on likelihood of confusion. Evidence of relatedness may include prior use-based registrations of the same mark for both Applicant’s goods and/or services and the registrant’s goods and/or services. Other types of evidence may include ads showing the subject goods/services being advertised together or sold by the same dealer or manufacturer or news articles or websites showing that the goods/services are used together or used by the same purchasers. The identifications alone (in the application or registration) may be enough to constitute evidence of relatedness of the goods or services.
The central inquiry should be: how are the consumers encountering the goods or services in the marketplace? In other words, if the same persons will encounter the goods or services and mistakenly believe they share a common source, affiliation, connection or sponsorship, the marks will be considered confusingly similar. The converse is also true. If the same persons do not encounter the products or services in the marketplace, then even if the marks are identical, there will be no likelihood of confusion.
The identification in the trademark application or registration will determine the nature and scope of the Applicant’s or Registrant’s goods or services. A common misconception is that if there is a broadly worded identification cited against an application, an Applicant will be able to narrow its description of goods or services to avoid a likelihood of confusion refusal (§2(d) refusal). This is not the case. If no restriction is listed in the identification, the Trademark Examiner will presume that the goods or services move in all normal channels of trade and are available to all classes of consumers.
Another common misconception is that goods are not related to services involving those goods. In fact, it is commonly held that confusion is likely where there are similar marks and one mark is for goods and the other is for a service related to those goods. See In re Hyper Shoppes (Ohio) Inc., 37 F.2d 463, 6 U.S.P.Q.2d 1025 (Fed. Cir. 1988), where the mark BIGG’S & Design for general merchandise store services was held likely to cause confusion with BIGGS & Design for furniture. It was also held that a design mark for distributorship services in the health and beauty industry would cause consumer confusion with the design mark for skin cream. See In re United Services Distributors, Inc. 229 U.S.P.Q. 237, 1986 WL 83661 (TTAB 1986). If you want to learn more about how a USPTO Examiner analyzes a likelihood of confusion case, please do not hesitate to contact The Law Offices of Nikki Siesel PLLC and speak to one of our New York trademark attorneys.