Category: Likelihood of Confusion

Software, Trademarks and Likelihood of Confusion: How to Respond to a Trademark Office Action

Tips for How to Respond to Trademark Office Actions Based on Likelihood of Confusion – Example Includes “Software”

How to Respond to Trademark Office Actions
Trademark Selection Hurdles

With the exponential growth of technology and small businesses over the past twenty years, selecting trademarks that are available for use and registration has become a daunting task for brand owners.  That daunting task began during the .com bubble of the late ‘90s and has continued ever since.  Since then, the U.S. Patent and Trademark Office (“USPTO”) has seen an explosion of trademark application filings as the Internet and technology have removed barriers to entry for small businesses. 

The proliferation of new companies has resulted in the proliferation of new company names, trademarks and U.S. trademark applications and issued registrations, which have made the brand name selection and registration process somewhat challenging and potentially costly for brand owners.   

Trademark Office Examination Hurdles

One potentially complex aspect of the U.S. trademark selection and protection process is navigating the USPTO registration process, which may entail battling conservative and, in some instances, unreasonable Trademark Examiners that refuse registration.  One ground upon which an Examiner may refuse registration is “likelihood of confusion” or, in other words, that the Applicant’s mark is too similar to a mark (or marks) already listed on the USPTO database. 

To read more about what constitutes “confusingly similar marks” read my post here.

Likelihood of Confusion Issue Raised in Trademark Office Actions

In any trademark infringement and likelihood of confusion analysis, the primary issue is whether a selected mark is likely to cause consumer confusion as to the source of certain products and/or services.  For example, if consumers are familiar with the mark ACE for running shoes and a “new comer” launches the ACE brand of running pants, it’s reasonable to conclude that consumers would be confused as to the source of those goods (they would reasonably believe that the maker of ACE™ running shoes has expanded its product line to include ACE™ running pants). 

Therefore, when Applicants respond to trademark Office actions, they must determine whether the parties’ respective goods/services are related such that they may be viewed by consumers as originating from the same source.

Likelihood of Confusion and Software Products

Unlike the likelihood of confusion analysis for other types of products, such as clothing and office supplies, where the analysis may focus primarily on clothing vs. clothing and even clothing vs. hand bags and clothing vs. jewelry and office supplies vs. office supplies (generally), the analysis for software does not focus generally on software vs. software.  Rather, the analysis for software must dive much deeper into the functionality of and fields of use for the software, trade channels, buyers and buyer sophistication. 

Accordingly, when a mark for software products is refused registration on the ground the mark is too similar to another mark for software, you should first undertake a full review and analysis of the parties’ respective software products and delineate the differences in their functions, uses, channels of trade and buyers, if possible.

Threading the needleCommon Trademark Attorney Mistakes

In many cases, the difference between success and failure with respect to overcoming a trademark application refusal depends upon how well you “thread the needle” and make compelling arguments in favor of registration.  In most cases, it’s not the “beautifully-written” arguments that win.  Rather, it’s the evidence that supports well-crafted arguments designed to convince the Trademark Examiner that the parties’ respective goods/services, including software products, are not of the type that would originate from the same source.  Furthermore, arguments should include whether the marks are confusingly similar and whether relevant buyers would reasonably believe that the parties’ respective goods/services are of the type that would originate from the same source and/or whether those goods/services travel in the same  channels of trade to the same class of buyers.  

A big error that attorneys make when responding to trademark application Office action refusals is submitting the “tossed salad” response; making all arguments from all angles to see which argument “sticks” with the Examiner.  Having been a USPTO trademark examining attorney, I can tell you that’s a big mistake and brings the Applicant’s attorney’s credibility into question, which ultimately can hurt the brand owner.  

Simply put, if outside counsel does not understand which arguments are compelling for a case and prepares a “tossed-salad–response,” the Trademark Examiner simply cannot take any of the arguments seriously.  For that reason, gathering compelling evidence first and only making relevant arguments is the best strategy for overcoming any trademark Office action refusal. 

Strategies for How to Respond to Trademark Office Actions  Based on Likelihood of Confusion 
Respond to Trademark Office Actions
Navigate this Slippery Slope!

Below are examples of arguments and positions that we consider when  responding to trademark Office actions based on likelihood of consumer confusion between marks for software:  

1. The functionality and purpose of Applicant’s software are entirely different and distinct from the functionality and purpose of the software listed in the cited registration.  [Explain why]

2. Applicant’s and cited registrant’s respective software products are used to carry out discrete, specific, and, most importantly, unrelated tasks.   [Explain why]             

3. It is well settled that an Examining Attorney must not only consider the similarities of the marks, but must also compare the goods and/or services to determine if they are related such that confusion as to origin is likely. The Examining Attorney must also consider all circumstances surrounding the sale of the goods and/or services, such as the marketing channels and the identity of the prospective purchasers. [Explain]

4. Applicant submits herewith information about its products and services at Exhibit A and information about the cited marks at Exhibit B, which clearly delineate the differences between parties’ respective software products.  The materials attached in Exhibit A clarify that Applicant’s software products are software development tools and applications, while Exhibit B clarifies that the cited registrant’s highly technical and sophisticated software is used for data storage systems, which would be used by large commercial and/or government agencies. Applicant’s products and services, however, are used by software developers.  Accordingly, the functionality of the parties’ respective software products is different and their software products would likely travel in different channels of trade to different types of buyers for different uses, which renders consumer confusion unlikely.   

5. Although each of the parties offer software products and/or services, those products and services are used in different market niches and for different applications (data storage systems vs. computer software development tools), which further renders confusion between the parties’ marks unlikely.  Goods may fall under the same general product category but operate in distinct niches.  When two software products are part of distinct sectors of a broad product category, they can be sufficiently unrelated such that consumers are not likely to assume the products originate from the same source.  [Explain why]

6. It is well-settled that the USPTO recognizes the “un-relatedness” of distinct product niches.  A cursory review of the USPTO database indicates that the Office has consistently permitted registrations of identical and near identical marks for computer software as long as the functionality of the software products does not overlap and the software products are not of the type that would typically originate with the same source.  Applicant submits herewith third party registrations for the identical mark for software…  

Conclusion – How to Respond to Trademark Office Actions

Before drafting that “creative” and “beautifully-written” trademark Office action response that sounds great and impresses the reader, the attorney should first take a step back, understand the technologies, understand the business sectors at issue and gather compelling relevant evidence that supports the Applicant’s position and then prepare credible and well-crafted arguments in favor of registration.

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Trademark Application Denied Based on Likelihood of Confusion: What are “Confusingly Similar Trademarks?”

Trademark Likelihood of Confusion Refusal Issued by U.S. Patent and Trademark Office – What You Should Know

In the recent U.S. Trademark Trial and Appeal Board decision of In re Straight Up Southern, LLC, the Board once again sends a stinging message to a trademark applicant and upholds the Examining Attorney’s refusal to register the below depicted mark on the ground it is confusingly similar to the registered mark LILA GRACE: 

Trademark Likelihood of Confusion Refusal

Straight Up Southern sought registration of its mark for:

  • ‘short-sleeved or long-sleeved t-shirts; and tank tops,’ in International Class 25. 

The Examining Attorney refused registration under Section 2(d) of the Trademark Act on the ground Applicant’s mark is confusingly similar to the registered mark LILA GRACE for:

  • ‘bathrobes,’ in International Class 25.
It’s All About “Source” Confusion

In any likelihood of confusion analysis, the primary inquiry is whether consumers would be confused as to the source of the party’s respective goods. 

Common Misconception Clarified

The issue of “confusingly similar trademarks” is not whether consumers would mistakenly purchase a bathrobe when they intend to purchase a t-shirt; that is not the analysis for “consumer confusion.” 

Rather, “consumer confusion” is based on whether consumers would reasonably believe that bathrobes and t-shirts would originate with the same source (i.e., Ralph Lauren brand of t-shirts and bathrobes).  

If consumers would make that reasonable assumption, and if the marks of the parties are similar in terms of sight, sound, meaning and/or connotation (i.e., LILY GRACE vs. LILA GRACE), then we have a potentially serious issue of consumer confusion as to the source of the goods and possible trademark infringement, which may subject the junior user to liability and rebranding.  

Trademark Likelihood of Confusion Refusal
U.S. Patent and Trademark Office Campus

Another example of “What are Confusingly Similar Trademarks?”

Would consumers reasonably believe that running shoes and running pants originate with the same source?  Of course, they would.  I am quite certain that during the early years of Nike that Nike would not have permitted another party to sell Nikey™ brand of running pants – or any athletic wear – on the basis consumers would be confused as to the source of the parties’ respective goods. 

Trademark Law Protects Consumers … A First Priority

It is the protection of consumers from being confused or deceived as to the source of goods and services that is the crux of trademark law.  Trademark law’s primary concern is not the trademark owner… it’s protecting consumers, period.

Therefore, when brand owners adopt names that are similar to registered trademarks (i.e., Ovation vs. Avasion) for related products (i.e., skin lotions vs. hair shampoo), there is a high probability that the registered mark will block an application for the new comer’s similar mark on the basis of likelihood of confusion as to the source of the goods.  

Important note: Unregistered, a/k/a common law, marks must also be considered because they may still present barriers to the use and registration of a new comer’s mark and may be used by their owners to block a new mark’s trademark application.  For that reason, searching the U.S. Patent and Trademark Office (“USPTO”) database alone is not enough.

Board’s Decision in Lily Grace Case

Trademark Likelihood of Confusion Refusal Considerations

Turning back to the LILY GRACE case, the Board correctly identified the primary principles for refusing registration of Applicant’s mark, including that:

1. when determining whether marks are confusingly similar, the test is not a side-by-side comparison, rather the test is based on the average recollection of marks by consumers;

2. because the registered mark was registered in standard character form, the registered mark is protected in all formats, including the stylization of Applicant’s mark; 

3. although Applicant’s mark contains a design element, the added design is not enough to avoid consumer confusion because consumers call for goods by the word portion of marks;

4. there is no correct pronunciation of a mark and consumers may pronounce a mark differently than intended by the brand owner; 

5. the marks of the parties convey connotations of female names (LILY GRACE vs. LILA GRACE) – thus they convey the same connotations;

6. all of the parties’ respective goods are common apparel and relatively informal and would travel in the same channels of trade; and

7. the Examiner’s introduction of third party online store webpages evidence that it’s common for the same parties to sell all of the parties’ goods under the same trademark.

Key Take-A-Ways When Confronted with a Trademark Likelihood of Confusion Refusal

1. The parties’ marks and goods/services need not be identical to find trademark infringement

2. Trademark searches must consider “confusingly similar trademarks” and relatedness of products

3. The issue is whether consumers would be confused as to the source of the products – not whether they mistakenly purchase the wrong product (I purchased beer by mistake… I meant to purchase wine!)

USPTO Trademark Search Challenge

Search the USPTO database using the below sample search queries for Applicant’s mark LILY GRACE and see if they find the cited mark LILA GRACE and, more importantly, would have found it on the USPTO database prior to the LILY GRACE name launch and filing (it was already there…).

Click here to access the USPTO search page and then:

1. Scroll down and click: ‘Trademark Electronic Search System (TESS)

2. Click: ‘Word and/or Design Mark Search (Free Form)’

3. Copy and paste each search strategy (one search at a time) in the search window, hit “Submit Query” and then review the results

*lily*[bi,ti] and *grace*[bi,ti] and 025[ic]

*l{“iy”}l*[bi,ti] and *gra{“sc”}*[bi,ti] and 025[ic]

How did they do?  

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