Patent and Trademark Information: Trademarks - Likelihood of Confusion

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Trademark law prohibits businesses from using marks which are likely to confuse a reasonable consumer. Trademark registration may be refused if customers who uses an ordinary amount of care in selecting products:

• Might buy goods or services other than the ones they intended, because of similar trademarks,
  OR
• Might believe that one company's goods and services are sponsored or approved by another company.

For example a reasonably careful consumer might buy a can of Gold Coffee when intending to buy your product, Golden Coffee. Therefore the mark Gold Coffee would be considered to conflict with your mark.

Likewise, a reasonably careful consumer might buy a box of Golden Coffee Filters under the impression that they come from the same company as Golden Coffee. Again, this likelihood of confusion constitutes a conflict.

How To Tell If Two Marks Conflict

Reasonable likelihood of confusion is very difficult to determine. The USPTO offers some guidance on likelihood of confusion and preventing confusion.

Trademarks are registered in one or more specific classes of goods and services. Similar marks in different classes are usually not in conflict with each other, with one exception: similar marks for similar products which are sold in the same marketing channels may be in conflict even if they are registered in different classes. If two products could be sold in the same department of a department store, or advertised in the same registered in different classes, they may still conflict. More information: "Goods and Services."

How Can a Person Determine If the Marks May Conflict?

• Look at the marks to see if they are the same or similar.
  • If so, then look to see if the goods or services are the same or similar.
• What makes the marks confusingly similar?
  Do they satisfy any one of the following conditions?
  • Do they sound alike?
  • Do they look the same?
  • Do they have the same meaning or commercial impression?
  • Do they mean the same thing but in a different language?
  • Are they a word and the pictorial equivalent of the word
• If so, what next?
  Decide whether or not the goods or services are similar enough to be confusing.
• How do we do that?
  If you answer yes to any one of the three questions below, you may have identified likelihood of confusion.
• Ask the following questions:
  • Are the goods competitive? (e.g. books, books on tape, software)
    Rationale: Goods are sold in the same store.
  • Are the goods complimentary? (e.g. tennis rackets, tennis balls, tennis shoes & clothes)
    Rationale: May not be sold in the same store, but would be purchased by the same consumer.
  • Are the goods sold in the same store? (e.g. windshield wipers and oil filters)
    Rationale: Same environment, so consumers will think all products come from the same source (company).

Issues to Remember:

Likelihood of confusion applies to:

• Goods versus goods (e.g. salsa versus chips).
• Services versus services (e.g. restaurants versus hotels).
• Goods versus services (e.g. foods versus restaurants).

When the goods and/or services are not the same, the confusion arises from the consumer's mistaken belief that the same source (company) provides both the goods and/or the services.

Trademark protection is granted for the goods or services listed in the registration. Therefore, even if you know for a fact that a registrant only operates Mexican restaurants, if the registration states "restaurant services" then trademark protection is extended to all kinds of restaurants.