The initial test applied by an Examining Attorney when evaluating a proposed trademark for registration is whether the proposed trademark is so similar to a previously registered trademark that a “likelihood of consumer confusion” exists. In making this determination, the Examining Attorney must analyze each case in two steps.

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Step 1:  Are the Marks Similar

First, the Examining Attorney must look at both the proposed trademark and the previously federally registered trademarks for similarities in appearance, sound, connotation, and/or commercial impression. Generally, when the applicant’s trademark is compared to a registered or pending trademark, “the points of similarity are of greater importance than the points of difference.”  Furthermore, although the Trademark Examining Attorney must look at the trademarks in their entireties, one feature of a trademark may be recognized as more significant in creating a commercial impression and greater weight is given to that dominant feature in determining whether there is a likelihood of confusion. It is well established that the mere addition of a term to a registered trademark is not sufficient to overcome a likelihood of confusion.

Step 2:  How Related are the Goods and Services?

Second, the Examining Attorney must compare the goods or services being identified by the applicant’s trademark to the previously federally registered trademarks to determine if they are related and/or if the activities surrounding their marketing are such that confusion as to origin is likely. If the goods or services of the respective parties are closely related, a lower degree of similarity between trademarks is needed to reject the application.  If the goods or services of the respective trademarks are not closely related, a higher degree of similarity is needed.

What Can the Examiner Use to Reject my Trademark?

Trademarks considered by the Examining Attorney are those currently federally registered along with trademarks in prior filed applications (pending registration). If the Examining Attorney feels a currently registered trademark with related goods and/or services is similar in sound or commercial impression, the trademark can be cited as a reference against the applicant’s trademark. If there is a presently pending federal trademark which the Examining Attorney feels is confusingly similar with the applicant’s trademark, the Examining Attorney will suspend the applicant’s application, wait for the first trademark to be registered, and then cite it as a reference against the applicant’s trademark.

Should I Worry About Trademarks that Are Not Registered in the Trademark Office?

The Examining Attorney will not consider any trademarks that are not federally registered or at least pending at the United States Patent and Trademark Office (e.g. state marks, common law marks, or canceled, abandoned, and expired federal trademarks). This does not necessarily mean that canceled, abandoned, and expired federal marks are of no concern. For any number of reasons a registration might lapse while the underlying trademark remains in continuous use. In such cases, they would still be trademarks in prior use, with or without registrations, because trademark rights accrue from use, not mere registration. Accordingly, such marks should be the subject of investigations to determine whether the party owning the lapsed registration is: 1) still operating; and 2) still using that trademark. Likewise, similar state and common law marks and business names should always be the subject of further investigations to avoid adopting a trademark that is confusingly similar to that of another company. A federal registration does not overturn state or common law trademark rights that exist prior to the registration.

What Happens if Someone Else Was Using My Trademark Before Me?

A company that adopts a trademark confusingly similar to one being previously used by another company will not be able to use that trademark in the region where the other company has used it prior to the federal registration. This can cause problems where the previous company has used the trademark extensively. If the previous company has only used the trademark in a limited geographic area or is not using the trademark consistently, there are ways to limit the potential for conflict between the trademarks.

Generic or Descriptive Trademark?

The second test applied by an Examining Attorney when evaluating a proposed trademark for registration is whether the proposed trademark is distinctive, and not descriptive or generic. Since everyone is entitled to accurately describe their goods and services, trademarks can only be registered when the words used are distinctive when associated with their particular goods or services. This requirement ensures that the trademark is capable of distinguishing the applicant’s goods or services from those of others.

In making a determination of distinctiveness, the Trademark Examining Attorney must decide if the trademark conveys an immediate idea of the nature, ingredients, qualities, functions, characteristics, features, purposes, uses, etc. of the goods or services. In addition, the Trademark Trial and Appeal Board allows proof of descriptiveness to come from the results of computerized searches (i.e. results from Internet search engines).

What if my Trademark is Descriptive? – The Supplemental Register Option

If a Trademark Examining Attorney refuses registration on the Principal Register based upon descriptiveness, an applicant will often have the option to seek registration on the Supplemental Register. The Supplemental Register exists to allow registration of trademarks that are not distinctive, but are “capable” of becoming distinctive. To support an application for Principal registration of a trademark on the Supplemental Register, exclusive use of the trademark for at least five years will qualify as prima facie evidence of distinctiveness. Thus, registration on the Supplemental Register does not bar later registration on the Principal Register once the trademark has become capable of distinguishing the owner’s goods or services from those of others. However, the disadvantages to a trademark registered on the Supplemental Register are the loss of certain priority, constructive notice, evidentiary, and procedural benefits that would otherwise be afforded to a trademark registered on the Principal Register.

Trademark Registration Success

If the Trademark Examining Attorney finds that the trademark is commercially distinctive and uniquely describes the category of goods and services for which it is used, Federal Registration on the Principal Register will likely be granted.  It is always wise to consult with an experienced trademark attorney before filing a trademark application to get an initial evaluation of the likelihood of success for your application.  If your trademark application is being rejected by the Trademark Office, having an attorney help with the Trademark Office negotiations will significantly increase your chances of success and will also help save money in cases where the application is not likely to be allowed.  There are alternatives for protection and even Federal Trademark Registrations, even when a particular trademark filing was not successful.

Kenneth C. Booth

Ken Booth is a Registered Patent Attorney and IP Coach® specializing in patent and trademark services. Ken provides boutique-quality guidance and representation at state, federal and international levels during every phase in the life of patent, trademark, copyright, trade secret and licensing assets.
Kenneth C. Booth