Westchester Women's Bar Association

Other Considerations in a Likelihood of Confusion Analysis

A refusal under 2(d) of the Trademark Act (15 U.S.C. §1052(d) involves a likelihood of confusion analysis. Once an Examining Attorney refuses an application on this basis, it means that it has been determined that the applicant’s mark, as used with the identified goods or services, so resembles a previously registered trademark as to be likely to cause confusion. The likelihood of confusion evaluation commonly revolves around the similarity of the marks and the relatedness of the goods or services. For more information on the impact of similarities of trademarks see our web page entitled Similarities In Trademarks. For a better understanding of the role of the relatedness of the products or services see our web page entitled The Importance Of The Relatedness Of The Goods Or Services. Whether a Dupont factor is considered, depends on whether the applicant raises other factors and places the evidence into the record. See our webpage entitled Likelihood of Confusion Refusals – 2(d) Refusals, for all of the thirteen factors set forth in the seminal case of In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563 (C.C.P.A. 1973) that may be considered in a likelihood of confusion analysis.

The following are some likelihood of confusion considerations that although are not necessarily the most important in this type of an analysis should not be overlooked:

Third-Party Registrations

Third-party registrations should be used to show that the mark cited against the applicant’s mark is suggestive, descriptive, or frequently used by others in the industry and that the public will look to alternative features of the mark to distinguish the source. Third-party registrations can assist in showing that a mark is weak under the crowded field theory, but third-party registrations cannot justify the registration of another similar mark if consumer confusion will occur. An applicant can simply use other registrations to demonstrate that a term is a weak formative and therefore entitled to a narrow scope of protection.

International Classifications

International Classes have no bearing on the issue of likelihood of confusion. As an applicant do not rely on the argument that since the mark cited against yours is in a different international classification it cannot cause source confusion. An applicant will not prevail on this argument.

Similar Marks Owned by Different Parties

If the Examining Attorney cites more than one mark against yours and there are different owners of the respective trademarks, it is critical to point out that dilution may have already occurred. This argument will allow you to conclude that if the mark or a formative of the mark has already been diluted, there can be no likelihood of confusion.

Family of Marks Doctrine

A family of marks is a group of marks that share a recognizable common characteristic that the public associates with the source of the trademark. The family of marks doctrine is not available to an applicant looking to prevail in a likelihood of confusion refusal in an ex parte appeal. However, this doctrine can be invoked in an inter partes proceeding by a plaintiff. See Baroid Drilling Fluids Inc. v. Sun Drilling Products, 24 U.S.P.Q.2d 1048, 1992 WL 473853 (TTAB 1992).

Prior Decisions by Examining Attorneys

Do not make the novice mistake of trying to hold an Examining Attorney to his prior decision. Trademark cases are extraordinarily fact specific and each case is decided on its own merits. In fact, Trademark Examiners’ previous decisions are without evidentiary value. These prior decisions will not bind the Examiner nor will such decisions bind the Trademark Trial and Appeal Board (TTAB).

Cited Mark is No Longer Being Used

Do not assume that because the Examining Attorney cited a registration against your application that the mark in that registration is still in use in commerce. Investigating this issue can assist you in overcoming a 2(d) refusal. However, if an applicant wishes to challenge a registration, it must be done by filing a petition to cancel with the TTAB. The attorneys at the Law Offices of Nikki Siesel PLLC are dealing with these types of issues on a daily basis. Kindly contact one of their New York trademark lawyers for a courtesy consultation, if you need assistance with trademark law or have questions regarding strategic branding.

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