The initial test applied by an Examining Attorney when evaluating a proposed mark for registration is whether the proposed mark is so similar to a previously registered mark that a “likelihood of consumer confusion” exists. In making this determination, the Examining Attorney must analyze each case in two steps.
First, the Examining Attorney must look at both the proposed mark and the previously federally registered marks for similarities in appearance, sound, connotation, and/or commercial impression. Generally, when the applicant’s mark is compared to a registered mark, “the points of similarity are of greater importance than the points of difference.” Furthermore, although the Trademark Examining Attorney must look at the marks in their entireties, one feature of a mark 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. Moreover, it is well established that the mere addition of a term to a registered mark is not sufficient to overcome a likelihood of confusion
Second, the Examining Attorney must compare the goods or services being identified by the applicant’s mark to the previously federally registered marks 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, the degree of similarity between marks required to support a finding of likelihood of confusion is not as great as would apply with diverse goods or services. Marks considered by the Examining Attorney are those currently federally registered along with marks in prior filed applications (pending registration). If the Examining Attorney feels a currently registered mark is similar in sound or commercial impression, the mark will cited as a reference against the applicant’s mark. If there is a presently pending federal mark which the Examining Attorney feels is confusingly similar with the applicant’s mark, the Examining Attorney will suspend the applicant’s application, wait for the first mark to be registered, and then cite it as a reference against the applicant’s mark.
The Examining Attorney will not consider any marks that are not federally registered (e.g. state marks, common law marks, or cancelled, abandoned, and expired federal marks). This does not necessarily mean that cancelled, abandoned, and expired federal marks are of no concern. For any number of reasons a registration might lapse while the underlying mark remains in continuous use. In such cases, they would still be marks 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 mark. 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 trump state or common law trademark rights that exist prior to the registration. A company that adopts a mark 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.
The second test applied by an Examining Attorney when evaluating a proposed mark for registration is whether the proposed mark 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 mark 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 mark 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).
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 marks that are not distinctive, but are “capable” of becoming distinctive. To support an application for Principal registration of a mark on the Supplemental Register, exclusive use of the mark 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 mark has become capable of distinguishing the owner’s goods or services from those of others. However, the disadvantages to a mark registered on the Supplemental Register are the loss of certain priority, constructive notice, evidentiary, and procedural benefits that would otherwise be afforded to a mark registered on the Principal Register.
In conclusion, during the examination process, the two standards described above are applied to all prospective Federal trademarks. If the Examining Attorney finds that the mark 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.