The Trademark Test You Don’t Want Your Mark To Fail

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What you need. What we know.™ – Trademarks: Likelihood of Confusion

At the end of 2013, the USPTO employed 409 trademark examining attorneys. Any one of these 409 trademark examining attorneys could be assigned to examine your application and could issue an initial “likelihood of confusion” refusal for your trademark application. Clients, of course, never see the “likelihood of confusion” issue in the same way as the trademark examining attorney does.

In order to attempt to “win” the argument, however, and defeat the refusal (which can be very challenging and is more often than not ultimately unsuccessful), you need to know, at a minimum, the Top Five relevant factors:

1. Similarity/Dissimilarity of your mark and the mark(s) identified by the trademark examining attorney;

2. Similarity/Dissimilarity and nature of the goods/services (as described) of your mark and the mark(s) identified by the trademark examining attorney;

3. Similarity/Dissimilarity of trade channels in which the respective mark owners sell their goods/services;

4. Care/attention expected of the consumers of the goods/services of the respective marks;

5. Fame of the mark(s) cited by the trademark examining attorney.

Confused yourself now?

A trademark attorney can assist you in trademark selection so as to avoid wasting money on an application that could generate a “likelihood of confusion” refusal in the first place.

What you need. What we know.™ – Trademarks: Likelihood of Confusion

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About the Author:

Barbara Alexander is licensed to practice law in California (2002), Georgia (2010), and Nevada (2001). Her passion for intellectual property dates back to the mid-90s when she returned from living in Dublin, Ireland to work for a Boston-based venture capital firm, investing in life sciences and technology companies. Attending law school in Washington, D.C. at Washington College of Law, American University from 1998-2001, Barbara’s legal training focused on federal law – of which trademark, copyright, and patent are a significant part. Barbara started Alexander Legal LLC in January 2014 to offer clients more personalized service at a better price point than larger firms can offer.
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