If your proposed trademark could be argued as closely resembling an already established mark, you’ll probably need an effective way of overcoming a likelihood of confusion refusal from the USPTO.

What Is a Likelihood of Confusion?

A “likelihood of confusion” refusal is a type of office action, particularly one of the variations of a refusal letter, sent by the United States Patent and Trademark Office (USPTO); an office action is an official letter sent to notify you of any legal issues regarding your trademark and the application of it. Any legal issues, including a likelihood of confusion, must be resolved before the USPTO can register your trademark.

A likelihood of confusion refusal will be sent to a party seeking a trademark if the examining attorney that reviewed their application found an issue of similarity. After searching the USPTO database of previously established trademarks, the attorney determined that the trademark you are trying to register is too similar to one or more priorly registered marks within the goods or services category.

This resemblance has the potential to confuse consumers; thus, it cannot be approved or honored. A trademark is any word or symbol that distinguishes one brand from another within the same industry or marketplace, including the brand’s name, bespoke imagery, marketing logo, etc. By registering your business trademark officially, your marks are protected from competitors using similar marks to yours, known as trademark infringement.

Disputing a Likelihood of Confusion Refusal

A qualified trademark registration lawyer can help you identify the ideal course of action to respond to your specific situation. If your trademark application was refused due to a concern of similarity, there are a few approaches you can take. It is possible to dispute the examining attorney handling your application and their findings regarding potential confusion.

You may respond to the refusal letter by outlining how their analysis of your trademark marking a resemblance to a registered one is inaccurate; this can be accomplished with a thorough argument of factual points that explain in detail how your proposed trademark is not similar to the one in question – particularly in the appearance, sound, meaning, or overall impression of the two trademarks being compared.

It is also possible to provide an argument that the examining attorney’s evidence of similarity is unfounded due to the lack of connection between the goods or services of your business and the one belonging to the trademark under scrutiny. Your opposing analysis would need to establish that the two enterprises are unrelated or within different trade channels; thus, the trademarks have no likelihood of being confused or infringing upon the registered business’s revenue.

Other Options for Fighting Refusal

Another option is to narrow the nature of your goods or services so that you’re able to specify a niche and thus resolve the conflict of similarity to a registered trademark within the same business category. You may also consider amending your trademark and/or adding another or multiple concurrent trademarks to ensure your brand is distinguishable.

Additionally, you can look into the status of the conflicting registered trademark to see whether it is still active and able to bar your trademark application; if the registered mark is “dead,” you can notify the examining attorney of this.

In some instances, you may also be able to negotiate with the registration owners so that they provide written consent to your trademark use and registration, including why the involved parties find that there is no likelihood of confusion. However, this is not always guaranteed to overcome the refusal despite being given serious consideration.

FAQs

Q: What Is a ‘Likelihood of Confusion’ Rejection?

A: Likelihood of confusion refers to a conflict of similarity between your proposed trademark and one that is already registered. Marks that are too similar within the same line of business can potentially confuse consumers.

As the registered trademark and business are protected, any marks determined to be too alike will be barred from infringing on their business. This refusal notice is one of several possible conflicts that must be addressed in order for your trademark application to be approved.

Q: How Do I Overcome a ‘Likelihood of Confusion’ Refusal?

A: One way to overcome a likelihood of confusion is to find sufficient evidence that effectively argues a lack of similarity or that the two trademarks provide different goods or services, therefore being unrelated and incapable of inciting marketplace confusion.

It may be more appropriate to amend the qualities of your trademark or limit the range of your offered goods or services so that the conflict of resemblance can be overcome. A trademark registration lawyer can help find the right approach.

Q: How Do You Respond to the Action of a Likelihood of Confusion?

A: A response to the action of a likelihood of confusion should be filed in a timely manner, ensuring that all legal issues or requirements are addressed by stating why you either agree or disagree with each one.

A likelihood of confusion refusal is one of several rejection letters the USPTO may send to you in response to your trademark application. In order for your proposed trademark to be cleared of any potential trademark infringement laws, all refusals and other requested criteria must be provided to the USPTO.

Q: How Do You Determine the Likelihood of Confusion in Trademark Law?

A: There are several factors that may be considered to pose a likelihood of confusion, including when you’re determining if another business is infringing upon your trademark and whether legal action is warranted.

These general factors include the strength of the already registered mark, the degree of similarity between the two marks, the degree of related trade channels, the senior brand’s consumer base (e.g., degree of care/sophistication, evidence of confusion), the junior brand’s intent and product/service quality, and more.

A Legal Professional Can Help Clear Your Trademark

At Four Reasons Legal, our experienced team of trademark law professionals can assist with your application if it’s been refused because of one or more legal issues. We can also help you avoid such refusals in the first place by applying our knowledge of trademark law and researching the preexisting database. Reach out to us for a consultation.