Delays in getting your trademark registered may hurt the start of your product introductions.
About 65-70% of trademark applications are refused at least once so getting it done
right the first time can shave off months.
Planning for a strong trademark as Not Just Patents defines it means verifying that
the mark is inherently distinctive or has acquired distinctiveness, verifying that
the mark is not used by others and is not a common term that others can use or approach
closely, verifying that the application meets all the USPTO rules, verifying that
the goods or services description is correct and broad or narrow depending on the
circumstances and verifying that the specimen of use shows the intended use in commerce.
Why use a trademark? Trademark are very important to commerce: purchasing decisions
are continually influenced by trademarks by distinguishing products from one another
and indicating a level of authenticity and quality about products and services. The
International Trademark Association calls a trademark the most efficient commercial
tool ever devised. Protecting an earned legal right should be a very important goal
for all businesses. Being able to associate a product or service with ® to designate
a federally registered trademark is a strong marketing tool and if that trademark
is strong, it can become one of a businesses most important assets.
(This Word Has Lots of Different Meanings)
Usually when you see the word VERIFY with regards to a USPTO trademark it is either
referring to some type of statement ( “The examining attorney required applicant
to submit a substitute specimen supported by a verified statement “) or referring
to the specimen submitted with an application (“An important function of specimens
in a trademark application is, manifestly, to enable the PTO to verify the statements
made in the application regarding trademark use. In this regard, the manner in which
an applicant has employed the asserted mark, as evidenced by the specimens of record,
must be carefully considered in determining whether the asserted mark has been used
as a trademark with respect to the goods named in the application.” In re Bose Corp.,
546 F.2d 893, 192 USPQ 213, 215 (CCPA 1976).)
One verified statement that is often referred to is the paragraph preceding an applicant’s
signature that states: “The undersigned being warned that willful false statements
and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. 1001,
and that such willful false statements and the like may jeopardize the validity of
the application or document or any registration resulting therefrom, declares that
all statements made on information and believe are believed to be true.” (Followed
by the signature and name of the applicant and the date signed.)
Verifying that there are no direct hits at the USPTO database with other registered
or pending trademarks is what some would call a verification or trademark search
or clearance search or a type of likelihood of confusion avoidance or Right to Use
search. Verifying beyond direct hits and beyond the USPTO to common law marks is
a good practice to avoid refusals, weak marks and lawsuits. Likelihood of confusion
is one of the most common reasons for refusals (office actions) and the most common
cause for oppositions and cancellations of trademarks. Not Just Patents looks at
this type of verification or clearance under step 2 above, Right to Use. We believe
that the Right to Use is not something that can be easily found from a quick search
of the federal trademark database because there are more factors involved than direct
hits on words. The legal analysis that a court would use is a good one to mimic and
a court starts with the strength or weakness of the mark, goes on to similarity
or dissimilarity of the marks in their entireties as to appearance, sound, or meaning
and continues with more factors. If you were on a jury in the Ninth Circuit, the
judge would give you instructions similar to the following that go beyond looking
at just identical appearance of marks:
Ninth Circuit Model Jury Instructions
INFRINGEMENT—LIKELIHOOD OF CONFUSION—FACTORS—SLEEKCRAFT TEST (15 U.S.C. §§ 1114(1)
You must consider whether the defendant’s [person being sued] use of the trademark
is likely to cause confusion about the source of the plaintiff’s [person defending
their rights by suing] or the defendant’s goods. I will suggest some factors you
should consider in deciding this. The presence or absence of any particular factor
[ ] should not necessarily resolve whether there was a likelihood of confusion, because
you must consider all relevant evidence in determining this. As you consider the
likelihood of confusion you should examine the following:
1. Strength or Weakness of the Plaintiff’s Mark. The more the consuming public recognizes
the plaintiff’s trademark as an indication of origin of the plaintiff’s goods, the
more likely it is that consumers would be confused about the source of the defendant’s
goods if the defendant uses a similar mark.
2. Defendant’s Use of the Mark. If the defendant and plaintiff use their trademarks
on the same, related, or complementary kinds of goods there may be a greater likelihood
of confusion about the source of the goods than otherwise.
3. Similarity of Plaintiff’s and Defendant’s Marks. If the overall impression created
by the plaintiff’s trademark in the marketplace is similar to that created by the
defendant’s trademark in [appearance] [sound] [or] [meaning], there is a greater
chance [that consumers are likely to be confused by defendant’s use of a mark] [of
likelihood of confusion]. [Similarities in appearance, sound or meaning weigh more
heavily than differences in finding the marks are similar].
4. Actual Confusion. If use by the defendant of the plaintiff’s trademark has led
to instances of actual confusion, this strongly suggests a likelihood of confusion.
However actual confusion is not required for a finding of likelihood of confusion.
Even if actual confusion did not occur, the defendant’s use of the trademark may
still be likely to cause confusion. As you consider whether the trademark used by
the defendant creates for consumers a likelihood of confusion with the plaintiff’s
trademark, you should weigh any instances of actual confusion against the opportunities
for such confusion. If the instances of actual confusion have been relatively frequent,
you may find that there has been substantial actual confusion. If, by contrast, there
is a very large volume of sales, but only a few isolated instances of actual confusion
you may find that there has not been substantial actual confusion.
5. Defendant’s Intent. Knowing use by defendant of the plaintiff’s trademark to identify
similar goods may strongly show an intent to derive benefit from the reputation of
the plaintiff’s mark, suggesting an intent to cause a likelihood of confusion. On
the other hand, even in the absence of proof that the defendant acted knowingly,
the use of plaintiff’s trademark to identify similar goods may indicate a likelihood
6. Marketing/Advertising Channels. If the plaintiff’s and defendant’s [goods] [services]
are likely to be sold in the same or similar stores or outlets, or advertised in
similar media, this may increase the likelihood of confusion.
7. Purchaser’s Degree of Care. The more sophisticated the potential buyers of the
goods or the more costly the goods, the more careful and discriminating the reasonably
prudent purchaser exercising ordinary caution may be. They may be less likely to
be confused by similarities in the plaintiff’s and defendant’s trademarks.
8. Product Line Expansion. When the parties’ products differ, you may consider how
likely the plaintiff is to begin selling the products for which the defendant is
using the plaintiff’s trademark. If there is a strong possibility of expanding into
the other party’s market, there is a greater likelihood of confusion.
[9. Other Factors. Any other factors that bear on likelihood of confusion.]
Federal Circuit-Likelihood of Confusion Test-(DuPont Factors)
(as reported in Champagne Louis Roederer, S.A. v. Delicato Vineyards, 148 F.3d 1373
The Court of Customs and Patent Appeals enunciated relevant factors for guidance
in testing for the likelihood of confusion [the DuPont factors from E.I. DuPont DeNemours
& Co., 476 F.2d 1357, 1361, 177 U.S.P.Q. 563, 567 (CCPA 1973)]. They are:
(1) The similarity or dissimilarity of the marks in their entireties as to appearance,
sound, connotation and commercial impression.
(2) The similarity or dissimilarity and nature of the goods or services as described
in an application or registration or in connection with which a prior mark is in
(3) The similarity or dissimilarity of established, likely-to-continue trade channels.
(4) The conditions under which and buyers to whom sales are made, i.e. "impulse"
vs. careful, sophisticated purchasing.
(5) The fame of the prior mark (sales, advertising, length of use).
(6) The number and nature of similar marks in use on similar goods.
(7) The nature and extent of any actual confusion.
(8) The length of time during and conditions under which there has been concurrent
use without evidence of actual confusion.
(9) The variety of goods on which a mark is or is not used (house mark, "family"
mark, product mark).
(10) The market interface between applicant and the owner of a prior mark:
(a) a mere "consent" to register or use.
(b) agreement provisions designed to preclude confusion, i.e. limitations on continued
use of the marks by each party.
(c) assignment of mark, application, registration and good will of the related business.
(d) laches and estoppel attributable to owner of prior mark and indicative of lack
(11) The extent to which applicant has a right to exclude others from use of its
mark on its goods.
(12) The extent of potential confusion, i.e., whether de minimis or substantial.
(13) Any other established fact probative of the effect of use.
Verifying there is no likelihood of confusion is good but planning for a strong trademark
involves more. See more on Verify, Apply, Respond and Protect. . .
Not Just Patents® Legal Services can help you Aim Higher® and Work Your Plan for
a Strong Trademark. Call us at 1-651-500-7590.
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