Why Conduct a Trademark Search?
Lambert Shortell & Connaughton conducts trademark searches for clients to determine if their proposed trademark or service mark causes a “likelihood of confusion” with any pending application or issued registration.
“Likelihood of Confusion” is a legal basis that the U.S. Patent and Trademark Office (USPTO) may use to refuse registration of a trademark or service mark because it is likely to conflict with a mark or marks already registered or pending before the USPTO.
How the USPTO Evaluates Conflicts
After a trademark application is filed, the assigned USPTO examining attorney will search the records to determine if such a conflict exists between the mark in the application and another mark that is registered or pending before the USPTO. The USPTO will not conduct any preliminary searches for conflicting marks before an applicant files an application and cannot provide legal advice on whether a particular mark can be registered.
Principal Factors in Determining Conflict
The examining attorney considers two key factors when evaluating whether a likelihood of confusion exists.
The marks do not have to be identical to create a conflict. It may be enough that the marks are similar in appearance, sound, or meaning.
The goods and/or services do not have to be the same. It may be sufficient that the goods and/or services are related in the marketplace.
What Happens When a Conflict Is Found
If a conflict exists between an applicant’s mark and a registered mark, the examining attorney will refuse registration on the ground of likelihood of confusion. If a conflict exists between an applicant’s mark and a mark in a pending application that was filed before the applicant’s application, the examining attorney will notify the applicant or his or her attorney of the potential conflict and possibly suspend action on the applicant’s application.
If the earlier-filed application registers, the examining attorney will refuse registration of the applicant’s mark on the ground of likelihood of confusion.