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.
The principal factors considered in reaching this decision are the similarity of the marks and the commercial relationship between the goods and services identified by the marks. To find a conflict, it is not required that the marks and the goods/services be exactly the same; instead, it is sufficient if the marks are similar and the goods and or services related such that consumers would mistakenly believe they come from the same source. Similarity in sound, appearance, or meaning may be sufficient to support a finding of likelihood of confusion.
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.
Although spelled differently, the marks sound alike; i.e., they are “phonetic equivalents.”
The marks look very similar, even though the one on the right uses a stylized font.
The marks are similar because, when the Italian word “LUPO” is translated into English, it means “WOLF.”
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.
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.
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