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Trademark Registration Basics and Registration Refusal For Likeliness of Confusion

November 14, 2017

BRANDING THROUGH USE OF LOGOS

 

Many companies and entrepreneurs who set out to market quality goods and services want unique logos and identifiers to brand their goods and services with. The general philosophy behind the branding of goods and services with logos is to provide greater consumer recognition of goods and services produced by companies using logos. Generally, companies desire for consumers to associate their logos with a brand that has a reputation for quality goods and services. Consumer recognition of the association of the logos and the quality goods and services is intended to increase after the goods are introduced to the market. As a result, the expected volume of sales for goods and services to consumers that feature the logos should exceed the expected volume of sales of the same goods and services that do not feature the logos. The branding of newer products and services is intended to continue with the previously used logos marketing the newer products and services with branding that the market should recognize through prior use of the logos in commerce.  

As an example, think of Ford trucks. Assume your bias out of the American Three (Ford, Daimler-Chrysler, and General Motors) is for Ford. The Ford blue oval badge gives consumers assurance of Ford quality in any Ford truck. Many consumers today will trust the quality of first year, new generation Ford trucks because of the brand that Ford created through manufacturing quality trucks and their use of branding with the Ford logo. As a result of its branding method, Ford has acquired millions of repeat customers and new customers worldwide through product recognition and their logo’s association with quality.

 

ACQUIRING TRADEMARK PROTECTION FOR LOGOS

 

Many companies seek the assistance of attorneys to register their logos with the United States Patent and Trademark Office (USPTO), to prevent the use of their logos by other companies and individuals. The use of logos that were originally associated with companies that have established brands and consumer bases by other companies allows the other companies to fraudulently market their own goods to consumers under the established branding of the original logos owned by the original users. This fraudulent use of established company brand logos by other entities could potentially destroy established brands due to the uncertainty and confusion caused for consumers who may struggle to determine whether goods are produced by the original manufacturers and users of the logos or by alternative producers who use the logos of established brands to mislead consumers into believing their products were produced by the original logo users. Thus, many businesses employ attorneys to register their logos with the USPTO to prevent this scenario from occurring.    

 

The protection provided to logos through trademark registration enables trademark holding companies to file lawsuits for trademark infringement against fraudulent users of their registered trademarks to enjoin the fraudulent users from continued use of their trademarks through the established intellectual property legal process. While trademark registration is recommended for logos used in commerce, issues may arise in the trademark registration process that prevents the registration of proposed trademarks with the USPTO.

 

 

REJECTION OF TRADEMARK REGISTRATION BY THE USPTO

 

Once an organization’s logo is submitted to the USPTO with a trademark registration application, the USPTO will either register the trademark or send the applicant an Office Action letter stating that the USPTO will not register the trademark. A legal justification and reasoning will be provided in the letter, with citations of law to justify the reasoning for the USPTO’s refusal to register an applicants proposed trademark.

I once encountered this issue with a client who submitted an application for trademark protection, prior to the client contacting our office. After submission of their trademark application, the client received a letter, known as an office action letter that stated the USPTO’s refusal to register our client’s proposed trademark. The application stated that the reasoning behind the USPTO’s refusal was likeliness of confusion, pursuant to the Trademark Act Section 2(d), 15 U.S.C. § 1052(d). In this scenario, a likeliness of confusion could arise from the use of both our client’s proposed trademark and a currently registered trademark that is presently being used in commerce by another entity. In other words, my client’s proposed trademark and the trademark that is currently registered to another company are so similar that consumers could potentially become confused as to which trademark is associated with which company. This potential situation could create economic loss for both companies similar to the scenario stated above, where unauthorized use of registered trademarks by unauthorized users creates consumer confusion, which can destroy branding.

 

LIKELINESS OF CONFUSION

 

            In any likeliness of confusion determination, two key considerations are similarity of the marks and similarity or relatedness of the goods and/or services associated with proposed and existing trademarks. In re Aquamar, Inc., 115 USPQ2d 1122, 1126 (TTAB 2015) (citing Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103, 1992 USPQ 24, 29 (C.C.P.A. 1976). The reasoning for the likeliness of confusion rejection that our client received is as follows.

            The first justification for likeliness of confusion reasoning that was provided by the USPTO was the related nature of the trademarks. The USPTO stated that the words displayed in our client’s trademark were almost identical visually to an existing trademark, and that the two trademarks make similar commercial impressions and are pronounced the same way. This remark hints at the tests used by the examining attorneys at the USPTO when they review registration applications. Sight and sound are analyzed. If an applicant’s proposed trademark is too similar in those regards to a currently registered trademark, the application will likely be denied for likeliness of confusion.

            The second justification for the likeliness of confusion reasoning that was provided by the USPTO in our case was the related nature of the services provided by my client and the owner of the currently registered trademark. The descriptions of the services that were listed in my client’s trademark registration application and the current trademark registration for the existing trademark of the other entity are similar. The letter stated that given the highly related nature of the services provided by my client and the other entity, under highly similar marks conveying similar commercial impressions, likeliness of confusion as to the source of products and services would likely arise.

 

REMEDIES

 

            After receiving an office action letter from the USPTO, a trademark registration applicant may respond to the letter within six months of the date of issuance of the USPTO’s letter before having this option revoked. A response may consist of legal arguments that cite law that argue as to why the USPTO should withdraw their refusal to register the applicant’s proposed trademark. If you encounter this situation, read and carefully follow the proper response instructions provided by the USPTO. The USPTO will not review your response if all the steps listed for proper responses are not complied with.

 

            Alternative remedies exist for some applicants when their trademark registration applications are denied by the USPTO. Always use caution in this scenario and seek the assistance of an attorney that is licensed in your state if you find yourself in this situation or a similar situation, and consider using a licensed attorney from the outset in all intellectual property matters.

For more information regarding your case, call Biazzo Law, PLLC today to schedule a consultation.

 

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