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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Podcast 2: How are International Trademark Rights Created? Ensuring a Smooth Global Brand Launch

How to Create U.S. and Global Trademark Rights 

How are International Trademark Rights Created?

This episode summarizes the ways in which U.S. and international trademark rights are created, including the following topics:

Many brand owners fail to recognize that trademark rights they create in the United States, and possibly elsewhere, do not extend automatically into other countries. 

Therefore, extending those U.S. rights into other countries without first undertaking proper due diligence can result in infringing third party rights, being sued for trademark infringement, seizure of products at Customs and costly rebranding exercises in certain countries.

How are International Trademark Rights Created? Accordingly, brand owners should understand how trademark rights are created internationally and then create strategic business plans setting forth a course that seeks to minimize risks and costs, while maximizing brand rights and protection.

The failure to secure trademark registration protection typically means that a company does not own any trademark rights – or think of it as a “government-issued business license” – to sell branded products in the majority of countries.

Thus, brand owners that fail to implement a coherent and consistent global filing trademark strategy may find that they have failed to maximize brand protection, possess inadequate trademark protection and rights for key brands and products in key markets, have not minimized business and infringement risks, have lost rights in key markets and consistently run over budget.

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Music Attribution: Special thanks go out to Jelsonic and Jeremy Wray for the fabulous music contained in my podcasts titled “The Returning.”  

Music: “The Returning” by Jelsonic (www.jelsonic.com)

The music is licensed under creative commons attribution license available on the Free Music Archive.

Disclaimer: This podcast is not legal advice.  The information contained in this podcast is provided as general information and for educational purposes only, and topics may or may not be updated subsequent to their initial posting.  Full Disclaimer details appear at www.TrademarkTitan.com