What is the potential for confusion of a trademark under US law?

The US is a country with the second most developed economy in the world. Therefore, this is a potential market for business owners when they want to develop their business abroad. Therefore, setting up a requirement for trademark registration to protect the business brands of these subjects is very important. Besides, the US is also one of the countries with a complete and complex intellectual property legal system. When filing an application for registration of a trademark in the United States, the mark may be rejected by the United States Patent and Trademark Office (USPTO) on several grounds. A primary ground of refusal is the “potential for confusion” of the mark. The article will raise the assessment of “potential for confusion” at USPTO under US law.

What is the potential for confusion of a trademark under US law?

A trademark is defined under US law as any word, phrase, symbol, design, or combination of these that identify the goods or services of a business entity, the manner in which consumers used to distinguish this business entity from competitors in the market.
Thus, the purpose of a mark is to distinguish goods and services of business entities, a sign (word, phrase, symbol, design, or a combination of words, symbols, designs). without the ability to distinguish it would not be a trademark. Therefore, when conducting the examination of a trademark application, one of the important factors to consider is the distinctiveness of the mark or the “potential of confusion” of the mark.

Considering whether a trademark is “potentially confusing” with another previously registered or filed trademark, the USPTO will compare and evaluate the criteria and factors. to draw a conclusion whether the mark under consideration is likely to cause confusion with a previously registered or filed trademark. After review, if it is found that there is a possibility of confusion, this trademark application under consideration will be rejected by the USPTO. In fact, the consideration of the “potential of confusion” of a trademark under US law is highly dependent on the subject conducting the assessment because at present there are only general criteria to support the reviewer. The US has developed a manual of the trademark examination process with guidance on assessing the “potential of confusion” of a mark.

What are the criteria for assessing the “likelihood of confusion” of a trademark under US law?

The criteria to evaluate the possibility of confusion are: first: trademark; Second: products and services.

First, evaluate the brand: According to the USPTO in determining the “potential of confusion” of a mark, marks are first assessed for similarity and dissimilarity. Note that marks do not have to be the same to be considered potentially confusing. The evaluated factors are form, sound, connotation and general commercial impression in the mind of consumers. As long as one of the above elements is the same or similar, the marks may be considered confusingly similar.
Some examples of similarity are as follows:
– Pronunciation: The following brands have different expressions but the same pronunciation: T-Car and Tee Kar
– Appearance: Trademarks with the same or similar form of expression: HY-TOP and HY-TEP
– Connotation: Trademarks have similar connotations: SEA and OCEAN both mean sea and ocean.

Second, evaluate products and services:

Even if two marks are found to be confusingly similar, the “potential of confusion” will only exist if the products or services of the marks under review are related. Whether products or services are related or not is determined by examining the commercial relationship between the products and services of the mark under evaluation and those of the registered or registered mark. previously submitted. Note that products and services are not necessarily identical, but consider whether these products or services are related to each other in such a way that consumers may misunderstand that these products or services are not identical. come from the same business entity or not. The following are examples of related products and services: Shirts, trousers and clothing retail services; shirt and hat products; banking and mortgage services.

What to do if rejected from USPTO because of a “potentially confusing” mark?

Assessing a registered mark’s “potential for confusion” is a fundamental process of the examination of a trademark application at the USPTO. The USPTO will conduct a search in its database to see if there is a registered or previously filed trademark that is likely to cause confusion with the mark in question. If the answer is yes, the USPTO will issue a notice denying the applicant’s trademark application and allow time for the applicant to explain or take other action. That is, even if a trademark application is rejected by the USPTO on the basis of “potentially confusing” with another mark, the applicant still has the opportunity to respond to maintain the trademark registration. In this case, it is helpful to seek out a professional legal team for optimal solutions in each specific case in accordance with the wishes of the applicant.

As such, a trademark application will be refused if the mark is “likely to cause confusion” with another mark on the market. That is why, before proceeding to register a trademark, business entities should conduct a trademark search to ensure a higher registrability.

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