Registering a trademark can be arduous, involving long waiting periods, intensive monitoring, and careful attention to detail. To further complicate matters, the United States Patent and Trademark Office may often reject trademarks for various reasons. These rejections can slow down an already difficult process and could risk losing access to intellectual property.
One such complication is the likelihood of confusion rejection, an office action issued by the USPTO that indicates an issue or conflict between the content of a registered mark and the application.
A skilled Chicago IP attorney from Sullivan & Carter, LLP may be able to help overcome these complications and help better protect the intellectual property of both corporations and individuals. For more information, consider scheduling a consultation by calling the office at (929) 724-7529.
A trademark application may be rejected due to a similarity to an existing trademark. As the purpose of trademarks is to distinguish the source of goods and services, a confusingly similar trademark may lead buyers to assume that disparate goods and services come from the same source, which can damage the profitability of a brand.
According to the United States Patent and Trademark Office (USPTO), this is a valid reason for rejection. Indeed, it is often the most common reason, as there are millions of approved trademarks in the United States. Therefore, a proposed mark must be demonstrably different from the other trademarks in circulation to avoid being rejected for the likelihood of confusion.
The landscape of intellectual property law is deep, and complex, and may change over time, which is something IP attorneys must constantly monitor and respond to. However, several consistent factors constitute likelihood of confusion. These grounds of refusal are important aspects of IP law to be aware of when registering a trademark.
The similarity of a proposed mark with an existing trademark is one of the more obvious and intuitive grounds for refusal. A proposed trademark must be demonstrably different in sound, appearance, meaning, and commercial impression. If a trademark looks and sounds like an existing trademark, it may confuse as to which is the true originator of the product or service. In addition, similar design elements may evoke an impression associated with an existing mark, which may also imply a likelihood of confusion.
However, this is not the only factor that reviewing attorneys will take into account. In addition to the similarity in form and presentation, the USPTO will also consider if the marks represent similar goods and services. A trademark application intending to register the company name “Apple” for a computer repair service will likely be denied, however, a similar trademark for a small publishing company may fare slightly better.
The details of what constitutes the likelihood of confusion are difficult to define, as they may be matters of perception determined by the reviewing attorney. For more information on how to avoid a trademark rejection, consider speaking with a skilled Chicago IP attorney from Sullivan and Carter, LLP.
While a rejection may be discouraging, an IP attorney may suggest that it is not the final word. Several steps may be taken if the applicant feels the trademark rejection was flawed or inaccurate. The USPTO generally recommends a comprehensive clearance search to ensure that an application does not conflict with any existing marks or brands. This can help prevent timely conflict and avoid things like trademark lawsuits.
However, many times it is too late to conduct this search once the applicant has received an office action from the USPTO. In the face of a likelihood of confusion rejection, the applicant could either abandon the trademark or initiate an appeal. With an appeal, the applicant can present an argument to convince the reviewing attorney that there is not a high likelihood of confusion. At this point, many applicants may consider seeking the advice of a practiced IP attorney.
When attempting to overcome a likelihood of confusion rejection, an IP attorney can be an incredibly valuable resource. They often have extensive experience in the field of IP law and can help craft compelling arguments to provide in an appeal. They may also be able to evaluate the validity of a rejection and provide advice on how to proceed.
One benefit that an IP attorney may be able to provide is an accurate analysis of a rejection. Trademarks can be rejected for many reasons, depending on the reviewing attorney, but there are still laws that govern what rejections are appropriate and which are not. If an applicant feels their trademark was rejected unnecessarily, an IP attorney may be able to confirm their opinion or advise an alternate course of action.
If the IP attorney determines that the rejection can be fought, they may also be able to assist in crafting a compelling appeal. Generally, an appeal will need to provide evidence as to why the proposed mark is different in form and impression or that the channels of influence are significantly different. While there may be other complicating factors, these are generally the foundations of such arguments. An IP attorney, being experienced in intellectual property law, may be able to help craft these arguments.
In addition to these, an IP attorney will generally have extensive experience and knowledge of their field. When complications and unexpected consequences arise, an IP attorney may be able to navigate them and provide sound advice. Due to this experience, they may be able to see options and courses of action that are not obvious to most others.
Listed below are several frequently asked questions regarding IP attorneys and likelihood of confusion.
The Dupont factors are another name for the factors that contribute to a likelihood of confusion rejection, such as sound, imagery, commercial impressions, channels of influence, and others.
No, the USPTO does not search for any potential conflicts with an existing trademark. The applicant is expected to conduct this research on their own with the resources provided.
Trademarks and recognizable brands can be a key factor in promoting wealth and expanding a business or endeavor, and protecting these marks can help secure the legacy of an organization. Therefore, understanding how to overcome rejections and secure this protection is vital to the establishment of a growing enterprise. For more information about trademark law, consider speaking with an experienced Chicago IP attorney from Sullivan & Carter, LLP. Schedule a consultation by calling the office at (929) 724-7529.
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