Why did I get a “likelihood of confusion” refusal on my trademark application?

A likelihood of confusion refusal is a decision by the United States Patent and Trademark Office (USPTO) that a trademark application cannot be registered because it is likely to cause confusion with a previously registered trademark. The USPTO will refuse to register a trademark if it is likely to cause confusion with a registered trademark in one of the following ways:

• Confusion of source: Consumers may believe that the goods or services offered by the applicant are the same as, or affiliated with, the goods or services offered by the owner of the registered trademark.
• Confusion of sponsorship or endorsement: Consumers may believe that the applicant’s goods or services are sponsored or endorsed by the owner of the registered trademark.
• Confusion of quality: Consumers may believe that the applicant’s goods or services are of the same quality as, or superior to, the goods or services offered by the owner of the registered trademark.

The USPTO will consider a number of factors in determining whether a likelihood of confusion exists, including:

• The similarity of the marks
• The similarity of the goods or services
• The strength of the registered trademark
• The likelihood that consumers will purchase the applicant’s goods or services believing that they are the same as, or affiliated with, the goods or services offered by the owner of the registered trademark
• The likelihood that consumers will be confused about the quality of the applicant’s goods or services

If the USPTO refuses to register a trademark on the ground of likelihood of confusion, the applicant has the right to file an appeal with the Trademark Trial and Appeal Board (TTAB). The TTAB will review the decision of the USPTO and make a decision on whether to register the trademark.

If the TTAB also refuses to register the trademark, the applicant has the right to file an appeal with the United States Court of Appeals for the Federal Circuit. The Federal Circuit will review the decision of the TTAB and make a final decision on whether to register the trademark.

If you need help responding to the USPTO about a refusal based on the likelihood of confusion with another mark on your trademark application, please contact WINTER LLP today.