What is involved in evaluating trademark search results?
Evaluating search results assesses whether a proposed mark qualifies for registration and avoids infringement claims. It focuses on preventing customer confusion with existing marks. For existing marks in disputes, it determines infringement likelihood. If confusion is probable or the mark resembles a famous one, select another mark.
Why is avoiding customer confusion central to trademark law?
Trademark law prioritizes preventing confusion about goods, services, or their sources. Confusion can lead to denied registration or successful lawsuits, even post-registration, if another owner proves likely confusion.
Why is likelihood of customer confusion a slippery concept?
Assessing confusion relies on experience, intuition, and case-specific facts rather than rigid rules. Outcomes vary, making predictions an art, not science. In uncertainty, consult experienced trademark counsel for guidance.
Can a lawyer's opinion provide certainty in trademark evaluations?
No, lawyers offer professional opinions, but outcomes remain unpredictable. They often advise conservatively to minimize risk, balancing caution with potential over-restriction.
What assumptions apply when evaluating confusion?
Evaluations assume any conflicting mark is in current use and was used or subject to an intent-to-use application before the proposed mark. If the proposed mark was first, or the conflicting application lapses, results may differ.
What constitutes likelihood of customer confusion?
Likelihood means confusion is probable, not certain or proven. It occurs if goods/services bought differ from intended ones, or if a mark misleads about sponsorship, approval, or connection (e.g., mistaking IBM Electronics for IBM-affiliated).
How is the likelihood-of-confusion test applied?
Courts weigh facts, evidence, and perceptions. For example, Ekbara Scents (fragrances in boutiques) vs. Ekbara Cards (business cards to small businesses): no confusion due to unrelated goods, channels, and customers. But Ekbara Scents vs. Ekbara Designs (enamel earrings in malls): confusion likely from shared channels, overlapping consumers, and potential competition.
Who are the hypothetically confused customers?
Reasonable customers exercising ordinary care—not bizarrely confused or obsessively verifying, but making typical judgments. Snap decisions count; e.g., Heartbeat vs. Heartlite oils confuse if similar after a glance. Challengers must show 5%-50% of customers likely confused, varying by case.
What is an overview of evaluating marks for confusion potential?
Key questions: (1) Are goods/services related (same channels/customers)? (2) Do they compete (one purchase affects another)? (3) How similar are marks (sound/appearance/meaning)? (4) How strong is each mark? (5) What do goods/services cost (care in purchase)? (6) Same customer base? (7) One owner uses mark on multiple products/services or likely to expand? Weigh facts subjectively; first three factors most critical.
How closely related are goods or services?
Related if in same class, marketed similarly, or potentially confusing despite classes. Use international classification for guidance, but classes don't definitively determine relatedness—courts consider actual marketplace factors.
What is the international trademark classification system?
Goods/services grouped into 45 classes (34 goods, 11 services) for registration and searching. Classes help assess relatedness; e.g., software in Class 9, but search may include coordinated classes like 10, 16, 28, 35, 38, 42. Coordinated classes are "related" for searching but not always for confusion.
How to fit goods/services into appropriate classes?
Study class lists and examples. If unsure, consult PTO's Acceptable Identification of Goods and Services Manual (online, searchable). Enter terms like "website and design" (Class 42) or "coffee and filter" (Class 16). Manual notes additions/deletions/modifications. Alternatively, search TESS for competitors' classes using free form with [gs] (e.g., "delivery [gs] and Internet [gs]") or competitor terms (e.g., "Crayola" for crayons in Class 16).
What role does product expansion play in relatedness?
Protection extends if owner likely expands into new areas. Famous marks have broad nets (e.g., Gallo wine to cheese). Smaller marks narrower. Predict via company actions or market trends; no simple method—relies on case weighing.
What are marketing channels in confusion analysis?
Channels are outlets, media, store placements, and directories. Related if sold similarly, in same stores/catalogs, advertised in same media/journals/websites, or target same base. Internet as one large channel increases relatedness, but courts view it variably—as unified or segmented.
Do goods or services compete?
Yes, if one purchase reduces the other's (e.g., competing bacon brands, airlines, fast food). Direct competition heightens confusion risk.
How similar must marks be to cause confusion?
Assess sound, appearance, meaning. Spelling/punctuation variations don't differentiate if sounding alike (e.g., Phansee-pants = Fancy Pants, Duncan Doughnuts = Dunkin Donuts). Foreign equivalents similar if public understands (e.g., La Petite Boulangerie = The Little Bakery). Even partial similarities confuse in same markets (e.g., Quirst = Squirt, Sarnoff = Smirnoff, Lorraine = La Touraine).
How to assess if two marks are confusing?
Apply golden rule: Would you object if roles reversed? Seek objective feedback from friends/relatives; if any confuse, likely a judge would too—select another mark.
What additional factors influence confusion likelihood?
Mark strength: Strong marks (distinctive/coined words or secondary meaning) get broader protection; weak ones narrower. Similar to strong mark riskier.
Cost: Expensive items reduce confusion (careful purchases); cheap/impulse buys increase it.
Customer base: Shared bases heighten risk; separate ones lower it.
Multiple products/services: Use on varied items or expansion likelihood broadens protection (e.g., famous marks to unrelated areas).
What final factors affect confusion evaluation?
Infringement lawsuit history: Prior suits suggest aggressive enforcement, increasing risk.
Duration of use: Long use strengthens mark via recognition.
Intent: Bad faith (e.g., copying for free ride) supports confusion finding.
How to read a trademark search report?
Review comprehensively: federal registrations/applications, state registrations, common law uses (e.g., business directories, internet, domain names). Note mark details, owners, goods/services, dates, status. Assess relevance by relatedness, similarity, strength.
What does a federal trademark search reveal?
Registrations/applications on Principal/Supplemental Registers. Includes mark, owner, goods/services, class, serial/registration numbers, filing/use dates, status (e.g., live/dead). Intent-to-use applications indicate potential future conflicts.
What is in a state registration search?
State-registered marks, often with less detail than federal. Includes mark, owner, goods/services, class, registration number/date. State rights limited but indicate local use.
What comprises a common law report?
Unregistered uses from directories, databases, internet, domain names. Reveals potential prior users claiming rights via first use, even without registration.
How to draw conclusions from a search report?
If no similar marks on related goods/services, proceed confidently. If conflicts, assess confusion likelihood; if high, abandon or modify mark. Even clear searches don't guarantee no issues—unfound prior uses possible.