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Trademark Refusal – Likelihood of Confusion

I’ve filed an application with the United States Patent and Trademark Office (USPTO) to register my trademark and I have received correspondence indicating that my registration of my applied for mark had been refused based upon a likelihood of confusion. What does this mean?

One of the more popular rejections from the USPTO involves a likelihood of confusion argument. Typically, the trademark examiner searches a vast database for marks that are similar to the one for which registration is desired.

The likelihood of confusion rejection has two main prongs. The Examiner will compare the prior mark (found in the search) and your desired mark to determine: a) whether the marks are similar in appearance, phonetic sound, or meaning, and b) whether or not the marks are to be used for similar or related goods or services. If both prongs are met, the Examiner will refuse registration of your desired mark.

It is important to note that the first prong in the likelihood of confusion rejection is not based on the spelling of the mark. Therefore, marks that have a different spelling but are the same or similar phonetically may be considered as confusing to the consumer. Therefore, chopsticks and chopstix would be considered confusing to a consumer although the spellings are different. A mark that is a composite mark (combination of a word and a design or logo) may also be find itself victim to a likelihood of confusion rejection even if the prior mark does not have a logo or has a logo that is dissimilar to that of your desired mark. This is because the greater weight is given to the word because it is the word that consumers use to request the associated good or service.

Another common scenario with the likelihood of confusion argument is that the mark found by the Examiner may have multiple words (marks with multiple words are also known as compound word marks). When either your desired mark and/or the prior mark consists of multiple words, the Examiner will determine whether there is a portion of the word mark that is dominant in terms of creating a commercial impression. If the desired mark and the prior mark contain a word that creates a dominant impression, that would also be grounds for a rejection based upon a likelihood of confusion.

The second main prong in a likelihood of confusion involves a comparison of the good and services of the prior mark and the desired mark. If the desired mark is applying for good or services that are identical or related, this would be grounds for a rejection based on a likelihood of confusion. Therefore, if the prior mark is registered for pants, your desired mark would typically be unable to get a similar mark for shirts because these marks are both geared related goods, i.e. clothing. If the marks however are to be used for goods and services which are entirely dissimilar, it is possible for marks that are similar in appearance, meaning and phonetic sound to be used for entirely different trademarks. A popular example of a trademark using the same mark differently is the use of Delta which is used by Delta Airlines and Delta Faucets.

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