Confusion About Trademark Applications

In my entertainment law practice, the one subject that seems to generate the most confusion is trademarks. I am going to take the term "confusion" to a legal point in this blog post. "Likelihood of confusion" is a major hurdle to achieving a registration in the United States Patent and Trademark Office (USPTO).

Many music industry people have false impressions about the process of filing and registering a federal trademark. Some are savvy enough to file their own applications. However, when the application is reviewed by an examining attorney at the USPTO in Alexandria, Virginia, the fearless pro se applicant will call and request help. Many times it is too late to help. Application fees and the time spent filing the online application are wasted. So it is best to be informed about the basics of the process before beginning.

A mark must be in use in commerce before it can register. It is possible (and sometimes advisable) to file an application based on the bona fide intent to use the mark. This puts the claim to the mark on record and smooths the process of eventual registration once the applicant places his goods or services before the public for sale. However, the applicant must be using the mark and must be able to demonstrate use through a sworn statement online and a photo specimen filed as a part of the official application record.

Merely filing an application does not guarantee registration. Once filed, the application is placed in line for review by an examining attorney. The initial phase of the application process normally takes about ninety days.

If the mark meets all legal requirements for registration, it is published in the Official Gazette, a voluminous online record that few folks actually read. After publication, a thirty-day period is allowed for potential opposition by any individual who believes he/she would be damaged by the mark's registration. If no opposition is filed, a certificate of registration issues, and you can be proud of your "circle R" and the rights and privileges of registration.

Pursuant to the Trademark Act of 1946, an application that so resembles a mark already registered as to be likely to cause confusion, cause mistake, or deceive may be refused registration. This is where the examining attorney comes into the picture for review of an application. If the examining attorney determines that there are marks that bear the aforementioned resemblance to the one you are attempting to register, you are emailed a preliminary refusal to register, a/k/a an "office action". The skills of an attorney are needed to respond to office actions and to hopefully convince the examining attorney to allow the application to proceed.

It is possible to determine the likelihood of avoiding a likelihood of confusion office action before filing your application. The USPTO is 100% automated, and the application process is all online. The Trademark Electronic Search System (TESS) may be utilized by anyone, though trademark attorneys are more seasoned at using TESS to see if there are any marks already registered that would prevent registration of the name or logo that the potential applicant wants to register. There are also private services available for hire to produce more detailed searches for a modest fee.

A legal case known as DuPont that was decided in 1973 and stated the considerations for testing for likelihood of confusion still stands as a key point of law today. The 13 considerations (abbreviated for the purpose of this post) are:

1. Similarity of the marks in appearance, sound, connotation, and commercial impression.
2. Similarity of goods or services described in an application versus a potentially confusing registration.
3. Similarity of established trade channels.
4. Conditions of sale, i.e. "impulse" versus careful, sophisticated purchasing.
5. Fame of the prior mark (i.e. length of time it has been in use).
6. Number and nature of similar marks in use on similar goods.
7. Nature and extent of actual confusion, if any.
8. Length of time that there has been concurrent use without evidence of actual confusion.
9. Variety of goods on which a mark is or is not used (i.e. house mark, "family" mark, product mark).
10. Market interface between applicant and owner of prior mark, if any.
11. Extent to which applicant has a right to exclude others from use if its mark on its goods.
12. Extent of potential confusion (i.e. de minimis or substantial).
13. Any other established fact probative of the effect of use (in other words, is there anything else someone wants to put out there?)