Likelihood of Confusion

Likelihood of Confusion

A trademark identifies the source of goods, whether they are sneakers (Nike), soda (Coke), soap (Dove), hamburgers (McDonald’s) or cameras (Nikon). A service mark identifies the source of the services: “You’re in Good Hands” (Allstate Insurance) or “Let your fingers do the walking” (Yellow page advertising). Because very similar marks on competing goods and services can create problems for consumers, U.S. trademark law prohibits use of a trademark or service mark that is likely to cause confusion with an existing mark. This prohibition is found I 15 U.S.C. 1114.

While it may seem that the likelihood of confusion analysis is as simple as Justice Stewart’s description of pornography (“I know it when I see it”), the legal analysis is more complex. Each case has to evaluated on its merits, considering a multitude of factors. Identity of the trademarks is generally not enough, but is a strong predictor of the USPTO’s likelihood of confusion analysis

Trademarks 101

TRADEMARKS 101


Trademarks and Service Marks are a part of everyday commerce. A Trademark is a word, a name or a symbol used in trade with goods, which both indicate the source of the goods and distinguish them from others. A Service Mark is the same as a Trademark, except that it identifies and distinguishes the source of a service, rather than a product. Coke® is a nationally recognized Trademark. "The bank you keep for life"sm is a Service Mark of Newtown Savings Bank. Both Coca Cola and Newtown Savings Bank have registered with the U.S. Patent and Trademark Office and can use symbols denoting federal registration.
A federal registration does not establish Trademark status for either goods or services. That status comes from use in commerce. If Coca Cola did not use Coke®, it would not have or be able to maintain priority over all other users. Federal registration of Trademarks and Service Marks is not for everyone. Businesses that use a unique name to identify a product can add the letters tm after the name to indicate the Trademark rights claimed. The letters can prove to be a deterrent for unauthorized use.
Anyone contemplating promoting a product or service nationally, or even regionally, should consider federal registration. It provides added protection and can help establish priority.
Unfortunately, the process of obtaining a federally registered Trademark or Service Mark is slow. The process can easily take two years. At the present time, it takes close to six months before the U.S. Patent and Trademark Office will even look at an application. Additional information about Trademarks can be found at www.uspto.gov. The Patent and Trademark Office maintains a comprehensive and informative site.

Why are trademarks important? For consumers, they provide a measure of consistency and an indicator of quality. Whether you like them or not, a MacDonald's (r) hamburger is pretty much the same no matter where you buy it. For businesses, they can be vaulable assets, allowing separation from the competition. In the next installment, we'll discuss how you acquire a trademark.

Hello and Welcome

Welcome to the Trademark Shop, a blog devoted to trademark and other intellectual property issues. We'll cover interesting cases and other topics of interest to a general audience.