A trademark is a word, phrase, symbol or combination identifying a product or service in the marketplace. Trademarks can also cover shapes (such as a bottle), sounds, colors or smells. Registered trademarks are trademarks granted additional legitimacy by the appropriate government agency. U.S. Business names are protected under other legislative laws. State governments also register trade and service marks. In most countries, but not all, registration of a mark is not required to gain legal protection. Most marks are not registered, and may be legally protected by "common law," to a lesser degree. All of these types of marks can be used to stop others from using identical or similar marks.
United States trademark examiners use a "likelihood of confusion" test to determine whether a conflict exists with other U.S. registered marks. Likelihood of confusion is dependent not on a side by side comparison of two products or services but the “fallible recollection of an average purchaser who normally retains a general rather than a specific impression of trademarks." The principal factors considered by the examining attorney in determining whether there would be a likelihood of confusion are:
- the similarity of the marks; and
- the commercial relationship between the goods and/or services listed in the application.
To find a conflict, the marks do not have to be identical, and the goods and/or services do not have to be the same. It may be enough that the marks are similar and the goods and/or services related.
If a conflict exists between your mark and a registered mark, the examining attorney will refuse registration on the ground of likelihood of confusion. If a conflict exists between your mark and a mark in a pending application that was filed before your application, the examining attorney will notify you of the potential conflict. If the earlier-filed application registers, the Examining Attorney will refuse registration of your mark on the ground of likelihood of confusion.
In addition to likelihood of confusion (discussed above), an examining attorney will refuse registration if the mark is:
- primarily merely descriptive or deceptively misdescriptive of the goods/services;
- primarily geographically descriptive or primarily geographically deceptively; misdescriptive of the goods/services;
- primarily merely a surname; or
This is not a complete list of all possible grounds of refusal. See Chapter 1200 of theTrademark Manual of Examining Procedure (TMEP).