Trademark registration is a business rite of passage that tells the public and your competitors that this is your brand and that you intend to protect it. Before the United States Patent and Trademark Office (USPTO) approves the registration, it conducts a search of its records for conflicting trademarks.
The USPTO’s task in the trademark is to avoid consumer confusion and to keep business identities distinguishable from one another. The agency will refuse a trademark application when the mark in it is similar enough to an existing or pending trademark that consumers believe the marks, goods or services from the two companies are all from a single business.
Eliminating consumer confusion
The USPTO might refuse registration of your mark on numerous grounds, including:
- Similarity in sound: When the business name on the mark application is the “phonetic equivalent” of an existing or pending trademark. On its website, the USPTO offers an example of a trademark that would be rejected because, though the two names are spelled differently, they sound the same: “T. Markey” and “Tee Marqee.”
- Appearance: The USPTO will reject an application when the name is similar in appearance, as in this example: T. Markey and T. Markey. A difference in fonts is simply not enough of a difference.
- Meaning: The USPTO can also refuse an application when a proposed mark is similar in meaning to an existing or pending trademark: “Lobo” and “Wolf.” When the Spanish “lobo” is translated into English, it means “wolf.”
- Commercial impression: When a proposed mark contains design elements that resemble another mark’s design elements enough to create a similar overall commercial impression.
- Conflicting mark: The USPTO says it will only reject a trademark application – even a “confusingly similar” mark – if it comes from a business offering goods and/or services related to the business that has the existing trademark. However, it cautions that the goods and/or services don’t have to be identical – merely related sufficiently “that consumers are likely to assume (mistakenly) that they come from a common source.”
It should be noted that when a trademark application is found to be in conflict with a pending application, the applicant’s mark will only be refused if the earlier application is approved.
Critical to conduct a search
The USPTO says it is “critical” for those considering applying for a trademark to “conduct a search for conflicting marks before you file.” It says that if there’s an existing trademark “confusingly similar to yours” – and your goods and/or services are related – your registration application will be refused.