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

Posted by:

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


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.
  Related Posts


  1. Anonymous  June 8, 2015

    I needed to thank you for this great read!! I definitely enjoyed every little bit of it.
    I have you saved as a favorite to check out new stuff you post.

  2. Anonymous  June 8, 2015

    This web site certainly has all of the information I needed
    concerning this subject and didn’t know who to ask.

  3. Kim  June 13, 2015

    Good information. Lucky me I came aross your
    blog by accident (stumbleupon). I’ve bookmarked it
    for later!

  4.  June 14, 2015

    You have ended my four day long hunt! God Bless
    you man. Have a nice day. Bye

  5. Anonymous  June 14, 2015

    This is a very good tip particularly to those fresh to the blogosphere.
    Brief but very precise info. Appreciate your sharing ths one.

    A must read post!

Add a Comment