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:
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.
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?
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.