Conflicting Marks &

Registering a Potential Trademark with the USPTO


When a USPTO Federal Trademark application is first submitted, an initial examination is completed by the trademark examiner. This examination includes a trademark search for conflicting marks with other federally registered marks and prior pending marks under 15 U.S.C. § 1052. (Trademarks registrable on the principal register; concurrent registration ). Conflicts are based on the Likelihood of Confusion, Mistake or Deception. Likelihood of confusion is the most common refusal.


There is no mechanical test for determining likelihood of confusion. The issue is not whether the actual goods are likely to be confused but, rather, whether there is a likelihood of confusion as to the source of the goods. In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993), and cases cited therein. Each case must be decided on its own facts. Trademark Manual of Examining Procedure (TMEP) 1207.01 Likelihood of Confusion.

Mechanical searches relying on international classifications to identify relatedness are flawed because a difference in the classification of goods has no bearing on the question of likelihood of confusion. The classification system is simply for the convenience of the USPTO and has no bearing on the relationship of the goods. See In re Leon Shaffer Golnick Advertising, Inc., 185 USPQ 242 (TTAB 1974). It is the manner in which the applicant and/or registrant have identified their goods or services that is controlling. Jean Patou Inc. v. Theon Inc., 9 F.3d 971, 29 USPQ2d 1771 (Fed. Cir. 1993); National Football League v. Jasper Alliance Corp., 16 USPQ2d 1212, 1216 n. 5 (TTAB 1990).


For examples of office actions (refusals) and how to overcome likelihood of cnfusion refusals, see Overcoming Refusals. For tips of trademark searching see trademarksearchtips.com. For all of the steps involved in the trademark process, see the USPTO trademark web site or our Not Just Patents site at StepstoaTrademark.com.



Conflicting Marks are Common Issues for Trademark Application Refusals, Oppositions and Cancellations, and Infringement Suits

The claim of likelihood of confusion or conflicting marks–where a proposed mark so resembles a previously registered or prior pending federal trademark as to be likely to cause confusion, mistake, or deception is one of the most common grounds for a USPTO trademark application refusal (along with lack of distinctiveness).

Any doubt regarding a likelihood of confusion is resolved in favor of the prior registrant.  Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988); TMEP §§1207.01(d)(i) Doubt Resolved in Favor of Registrant.

For examples of office actions (refusals) and case law examples for conflicting marks, see Section 2(d) Refusals.


The USPTO does not search unregistered prior marks when deciding if a registrant has a right to register. The USPTO only determines (during the registration process) if the the potential trademark has a right against other registered or pending marks (conflicting marks).

BUT the prior owners of registered and unregistered prior marks (“a mark or trade name previously used in the United States by another and not abandoned”) have a right to protest registrations of marks through oppositions or cancellations. Prior owners may search the USPTO applications and registrations for potential harm that may result from a registration and bring an inter partes (more than one party) action to oppose that registration (see Publication for Opposition and Opposition Steps/Cancellation Steps) or try to cancel already registered marks.

While not a common occurrence with respect to the total number of registrations sought, the claim of likelihood of confusion or conflicting marks is also “the most frequently encountered issue in Board inter partes  proceedings [oppositions and cancellations].” Trademark Trial and Appeal Board Manual of Procedure ((TBMP) 309.03(c) Grounds). See Grounds for Opposition or Cancellation for more information on oppositions and cancellations.)

[Inter partes proceedings before the Trademark Trial and Appeal Board are similar to a civil action in Federal District Court. The Board is an administrative tribunal with jurisdiction over the issue of registrability only.]

Opposition and Cancellations Proceedings (and infringement suits) can also be brought by prior users under claims of Dilution.


Newcomers To A Market Should Be Careful In Selecting a Name

“In considering the similarity of the marks, it also should be kept in mind that a party, in choosing a name or mark in a field already occupied, has an affirmative duty to avoid all possibility of confusion with existing names and marks. Union Carbide Corp. v. Ever-Ready Inc., 531 F.2d 366, 382 (7th Cir.), cert. denied, 429 U.S. 830, 97 S.Ct. 91, 50 L.Ed.2d 94 (1976). "A newcomer to a product field has a legal duty to select a mark that is totally dissimilar to trademarks already being used in the field." Jockey International, Inc. v. Burkard, 185 U.S.P.Q. (BNA) 201, 208 (S.D.Cal.1975). “[N]ewcomers to a field of business have an infinity of nonconflicting names from which to choose and have a duty to select a name which is totally dissimilar to a trade name and trademark already being used for related goods. Watkins' Products, Inc. v. Sunway Fruit Products, Inc., 311 F.2d 496, 499 (7th Cir. 1962) as quoted at 404 in St. Charles Mfg. Co. v. St. Charles Furniture Corp., 482 F.Supp. 397 (N.D. Ill., 1979).


Trademark Searching and Clearance for conflicting marks and conflicting trade names that may cause a likelihood of confusion refusal, opposition or cancellation, or infringement suit is a good investment. Searching should be done BEFORE choosing a mark to invest in (including beginning the registration process). An uninfringing trademark can be a money and time saver as well as a way to avoid lawsuits. Call Not Just Patents at 1-651-500-7590   for a quote on a verifying a trademark for use.


How Long Does it Take to Get A Trademark Registered?

Trademark applications with the USPTO that have no conflicting marks and that meet all the legal requirements (including containing an acceptable specimen of the mark in actual use) may register in as little as 7-8 months. The 2012 average time to registration or abandonment was 10.2 months. (See the Not Just Patents web site TrademarkStatistics.com for more information.) The status message   APPROVED FOR PUB - PRINCIPAL REGISTER appears about 4 months before the mark registers for a use-in-commerce mark that is not opposed. The status message ALLOWED PRINCIPAL REGISTER - SOU ACCEPTED for intent-to-use applications appears about 6 weeks before the mark will register.

Trademark applications with conflicting marks or other issues may require significant legal work and time to resolve the problems. The time to registration or abandonment may be years.


Abandonment (from USPTO Glossary)-A trademark application that has been declared abandoned is "dead" and no longer pending. Abandonment occurs under several circumstances. The most common reason is when the USPTO does not receive a response to an Office Action letter from an applicant within 6 months from the date the Office action letter was mailed. Another instance is when the USPTO does not receive a Statement of Use (or request for an extension of time to file a statement of use) from an applicant within 6 months from the issuance of a Notice of Allowance). Applications abandoned for failure to respond to an Office Action or a Notice of Allowance can be revived or reinstated in certain circumstances.


What does APPROVED FOR REGISTRATION SUPPLEMENTAL REGISTER mean? Applications on the Supplemental Register do not publish for opposition but still go through the final Official Gazette publication process. This message appears about 8 weeks before the mark registers (and publishes).


*What does ‘TRAM Snapshot of App at Pub for Oppostn’ mean?  It means that the trademark application was approved by the examining attorney for publication for opposition. This message is no longer used since the introduction of the USPTO’s new TSDR Trademark Status and Document Retrieval but does appear on older records. The Trademark Snap Shot Publication Stylesheet is a document, a table that presents the data on Publication Approval. Sample of TRAM snapshot. This is NOT the beginning of the Opposition period. Approximately two months after the trademark has been approved, it will receive a publication date for its publication in the Trademark Official Gazette. A Notice Of Publication postcard goes out to the applicant or the applicant’s representative and that date of publication, always a Tuesday, will be the beginning of the opposition period.

What is TRAM? The Trademark Reporting and Monitoring (“TRAM”) System . For applications filed through TEAS, the data provided by the applicant is loaded directly into the USPTO’s automated TRAM System. For applications filed on paper, the application documents are scanned into the Trademark Image Capture and Retrieval System (“TICRS”), and the data is manually entered into TRAM. TRAM is used by USPTO employees to obtain information about the location and status, prosecution history, ownership, and correspondence address for applications and registrations.



Not Just Patents ® Legal Services provides a very economical package for USPTO (or international) Trademark Registration and provides domestic representation for foreign applicants.


We suggest our service and our plan-a Not Just Patents Five-Part Verification as part of a Plan for A Strong Trademark:

To Verify a potential trademark is strong, available to use, and ready to register, the process should be more than a direct hit federal search. To maximize the commercial strength and minimize the weaknesses of a trademark, a potential trademark user should:

1) Verify Inherent Strength,

2) Verify Right to Use,

3) Verify Right to Register,

 4) Verify the potential mark (as currently used) Functions As A Mark, and

5) Verify that the Goods and Services ID is both the correct and the maximum claim that are user can make and verify that the Goods and Services ID meets USPTO requirements before filing.


We can provide services that include a quick and economical Response to Office Action (ROA). See Why Should I Have A Not Just Patents Trademark Attorney Answer My Office Action if you have already applied and been refused.


How to Avoid Likelihood of Confusion Refusals under Section 2(d) &

How to Overcome a Likelihood of Confusion Refusal

A strategic, narrow, and precise goods and services description on an initial application, made as a result of a thorough trademark search may result in no likelihood of confusion as to source, and similar marks can co-exist. Amending in a Response to Office Action (ROA) to a strategic, narrow, and precise goods and services description on a refused application may overcome a likelihood of confusion as to source, and similar marks can co-exist.


Not every  refusal has an answer that will overcome the refusal: some proposed trademark applications just do not comply with U.S. Trademark Law and do not qualify for common law protection because they are conflicting marks, lack distinctiveness or lack acquired secondary meaning or the capability of acquiring secondary meaning. Sometimes a new application can solve the problem, sometimes the mark must be incorporated with other elements to add distinctiveness.


If your trademark has value and you want to preserve the trade identity rights that you have already invested and secure more rights through federal registration, the cost of having a Not Just Patents ® Legal Services provide your Response to Office Action (ROA), Amendment to Allege Use (AAU), or Statement of Use (SOU) may be less than what you think and the time saved may be months or years. Our application fees are less than average but our results are very good. We would be happy to compare our fees and success to another firm-call us with a name and a quote.

According to the AIPLA Report of the Economic Survey 2009, on average, law firms charge $1,440 to perform a trademark clearance search, analysis, and opinion, $867 to prepare and file a trademark application, and $1,678 for prosecution of a trademark registration.  A Five Step Verification, application, and prosecution by Not Just Patents® Legal Services usually costs less than even one of these fees and we have a high success rate. Our trademark goals are to register strong trademarks, have long term clients, repeat business, and good referrals. Help us to meet our goals and we can help you to meet yours.



Not Just Patents ® and Aim Higher®  are registered trademarks of Not Just Patents LLC for Legal Services.



Call 1-651-500-7590 or email info@notjustpatents.com or ContactTrademark.com for Responses to Office Actions; File or Defend an Opposition or Cancellation; Patent or Trademark Searches and Applications; Send or Respond to Cease and Desist Letters.

For more information from Not Just Patents, see our other sites:      

Patents

Trademarks

Steps to a Patent    How to Patent An Invention

Patent Search Steps

Trademark e Search    Strong Trademark     Enforcing Trade Names

Common Law Trademarks  Trademark Goodwill  Abandoned Trademarks

Should I Get A Trademark or Patent?

Patentability Evaluation

Trademark Disclaimers   Trademark Dilution     Oppose or Cancel?

Examples of Disclaimers  Business Name Cease and Desist

35 U.S.C. 101 Inventions patentable.

Verify a Trademark  Be First To File   How to Trademark Search

35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent.

Using Slogans (Taglines), Model Numbers as Trademarks

Which format? When Should I  Use Standard Characters?

35 U.S.C. 103 Conditions for patentability; non-obvious subject matter.

Trademark Statistics    Business Name Cease and Desist Letters

How To Answer A Trademark Cease and Desist Letter

35 U.S.C. 282 Presumption of validity; defenses

Trademark Refusals    Does not Function as a Mark Refusals

37 CFR § 1.53 Application number, filing date, and completion of application

Acceptable Specimen       Supplemental Register  $199 Statement of Use

How To Show Acquired Distinctiveness Under 2(f)

Filing Requirements for Patent Applications

Trademark Attorney for Overcoming Office Actions

Functional Trademarks   How to Trademark     Surname Refusal

List of U.S. Patent Classifications

Grounds for Opposition & Cancellation     Cease and Desist Letter

How Do U.S. Patent Classifications Work?

Valid/Invalid Use of Trademarks     Trademark Searching

Patent Statistics     Sample Patent, Trademark & Copyright Inventory Forms

Examples and General Rules for Likelihood of Confusion

USPTO Search Method for Likelihood of Confusion

Examples of Refusals for Likelihood of Confusion  DuPont Factors

Proximate Function

Color as Trade Dress  3D Marks as Trade Dress

Invention Information-  What is the Invention?

Ornamental Refusal  Standard TTAB Protective Order

Patent Field of Search

Descriptive Trademarks Trademark2e.com  Likelihood of Confusion 2d

Patent search-New invention

Merely Descriptive Trademarks   Merely Descriptive Refusals

Patent Search-Non-Obvious

Register a Trademark-Step by Step   Trademark Fixer

Difference between Provisional and Nonprovisional Patent Application

Likelihood of confusion-Circuit Court tests

Pseudo Marks    How to Reply to Cease and Desist Letter

Converting Provisional to Nonprovisional Patent Application (or claiming benefit of)

Overcome Merely Descriptive Refusal   Overcome Likelihood Confusion

What Does ‘Use in Commerce’ Mean?    SCAM Letters

Shop Rights

Section 2(d) Refusals   ApplyToTrademark.com

Patent Pending see also Patent Marking

Typical Brand Name Refusals  What is a Family of Marks?

Patent Drawings

Trademark Steps Trademark Registration Answers TESS  

Trademark Searching Using TESS  Trademark Search Tips

TSDR Trademark Status and Document Retrieval

What is a Small or Micro Entity?

Published for Opposition see also Opposition Steps/Cancellation Steps

Counterclaims and Affirmative Defenses

How to Respond to Office Actions

What is a Compact Patent Prosecution?

Protecting Trademark Rights (Common Law)

Steps in a Trademark Opposition Process   How do I Know If Someone Has Filed for An Extension of Time to Oppose?

Changes To Implement the First Inventor To File Provisions of the America Invents Act

What is the Difference between Principal & Supplemental Register? What If Someone Files An Opposition Against My Trademark?

Patent steps

How to Respond Office Actions  DIY Overcoming Descriptive Refusals

PCT Patent Application information

Trademark Clearance Search   DIY Trademark Strategies

Provisional Patent Effect on Patentability

Samples of Responses to Office Actions

ID of Goods and Services see also Headings (list) of International Trademark Classes

Broad Patents

Geographically Descriptive or Deceptive

Making Amendments in Response to Office Actions

TTAB/TBMP Discovery Conferences & Stipulations

TBMP 113 Service of TTAB Documents  TBMP 309 Standing

Examples Office Action Responses More Examples

Trademark Incontestability  TTAB Manual (TBMP)

Trade Secrets

What are Dead or Abandoned Trademarks? Can I Use An Abandoned Trademark?  Can I Abandon a Trademark During An Opposition?

State & Federal Trade Secret Laws

Differences between TEAS and TEAS plus  Zombie Trademark

Chart of Patent vs. Trade Secret

What Does Published for Opposition Mean?

How to Keep A Trade Secret

Acquired Distinctiveness  2(f) or 2(f) in part Extension of Time to Oppose

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