Harper Litigation Consulting and Research : 214-244-4608

PTO – Grounds for Refusal of a Mark

Likelihood of Confusion Grounds for a PTO Mark Refusal

The USPTO may be required to refuse registration of a mark on numerous grounds. One reason is there is a "Likelihood of Confusion" as to the source of the mark. The USPTO will conduct a search for conflicting marks as part of the official examination of an application. In evaluating an application, the examining attorney conducts a search of USPTO records to determine whether there is a conflict between the mark in the application and a mark that is either registered or pending in the USPTO.
When a conflict exists between the applicant's mark and a registered mark, the examining attorney will refuse registration of the applicant's mark on the ground of likelihood of confusion. If a conflict exists between the applicant's mark and a mark in an earlier-filed pending application, the examining attorney will notify the applicant of the potential conflict. The applicant's mark will be refused on the ground of likelihood of confusion only if the earlier-filed application becomes registered.
Sound

Your mark -- T. Markey   Conflicting mark -- Tee Marquee

Although spelled differently, the marks sound alike; i.e., they are “phonetic equivalents.”

Appearance
Your mark -- T. Markey   Conflicting mark -- T. Markey

The marks look very similar, even though the one on the right uses a stylized font.

Meaning
Your mark -- Lupo   Conflicting mark: Wolf

The marks are similar because, when the Italian word “LUPO” is translated into English, it means “WOLF.”

Commercial Impression

Your mark -- T. Markey drawing   Conflicting mark -- T. Markey

Because the marks include the same design element, they create a similar overall commercial impression, even though the one on the right also includes words plus the design.

 

Your mark -- City woman  Conflicting mark -- City Girl

The marks convey a similar general meaning and produce the same mental reaction.

 

Goods, Services, Goods & Services

Even if two marks are found to be confusingly similar, a likelihood of confusion will exist only if the goods and/or services upon which or in connection with the marks are used are, in fact, related. To find relatedness between goods and/or services, the goods and/or services do not have to be identical.  It is sufficient that they are related in such a manner that consumers are likely to assume (mistakenly) that they come from a common source.

Goods
Your goods -- T-shirts and pants  Related goods -- Hats
Services
Your services -- Banking services  Related services -- Mortgage lending services
Goods and Services
Your goods -- T-shirts and pants   Related services -- Online retail store services featuring clothing

Rhonda Harper, Trademark Infringement Survey Expert, Expert Witness

Rhonda HarperRetained by 100+ law firms since 2005, Ms. Harper is courtroom proven. She has been engaged to provide 65+ surveys, 80+ reports, 30+ rebuttals, 45+ depositions, and serve in 20+ trials. She has provided services to both Plaintiffs (60%) and Defendants (40%) across trademark and trade dress, packaging, merchandising, defamation, licensing, breach of contract, advertising, and commercial reasonableness. She has provided services in virtually every Circuit as well as JAMS and TTAB.

Ms. Harper's 30+ year career includes serving as a Fortune 100 Chief Marketing Officer. Having authored two books, she is a former Adjunct MBA Marketing Professor.

Ms. Harper is routinely retained to formulate expert surveys, conduct rebuttal critiques, or construct rebuttal surveys to show the potential difference in results with properly designed and executed surveys. She has extensive experience and a deep understanding of survey design, sampling, question construction, data analysis, and methodological pitfalls that introduce bias or systematic error.

Professional Memberships