When Selecting a Trademark, How Close is Too Close?
A foolproof approach to avoiding confusingly similar trademarks
A trademark goes a long way towards establishing value for your business and reputation for your brand—so the trademark selection process is crucial. When selecting a trademark, it’s important to choose a unique and distinct word and/or design to set your business apart from the competition. However, business owners should also be mindful not to select a trademark that’s too close or confusingly similar to another trademark that is used for similar goods and services.
This is where a real risk of trademark infringement comes in. The U.S Patent & Trademark Office (USPTO) and courts consider a multitude of factors when assessing infringement, but two of the most important factors are the similarities between the marks and the relatedness of the goods and services. The standard for trademark infringement revolves around consumers: How likely are they to be confused about the source of each party’s goods and services?
How Similar Are the Trademarks?
When reviewing similarities between trademarks, the marks are evaluated in their entireties by appearance, sound, connotation and commercial impression. The test is not a side-by-side comparison of the marks—instead, examining attorneys consider whether the marks are similar enough that consumers who encounter the marks would be likely to assume a connection between the sources of the goods. The focus is on the recollection of the average consumer, who normally retains a general commercial impression rather than a specific recollection of trademarks.
If you select a mark that’s similar to another mark, adding a highly distinctive logo and/or an additional distinctive term to the mark may reduce the risk of infringement. The added term, however, must be unique, rather than descriptive—because descriptive terms are typically common and make weak marks, meaning there’s a slim chance a descriptive term would distinguish your proposed mark from the existing mark. Just remember: Even when the mark at issue is particularly unique and distinctive, adding another term, even a distinctive one, may not be sufficient to avoid infringement. The more distinctive the mark, the stronger it is and the wider its scope of protection.
Ultimately, whether similar marks can coexist depends on impression those marks make upon the consumer. The Trademark Trial & Appeal Board (TTAB), the administrative board that oversees USPTO decisions, refused to register the mark WOODY WHEAT for beer because it was too similar to other registered marks that were also used for beer: WOODY STOUT and WOODY BROWN ALE. The issue for WOODY WHEAT was obviously the shared term WOODY, which enhanced its similarity to the prior marks. As a result, the addition of the term WHEAT wasn’t enough to avoid a likelihood of confusion because of its descriptiveness.
In contrast, the TTAB made a different call when considering the marks MY ZEN TEA and ZEN TEA TRADERS for tea. The TTAB found that even though the tea marks shared some similarities, they were each distinct enough in appearance and commercial impression that confusion between the two trademarks would not be likely. (It helped that the term ZEN is also relatively weak in terms of its connection with tea.) The Board found that the marks were not confusingly similar and allowed them to coexist on the trademark register.
One common misconception about reducing the likelihood of confusion is to change the spelling of a trademark, but alternative spellings don’t usually overcome the similarities in sound and commercial impression. Mark Speece, branding expert from StokeSignals, provides further context:
"The growing list of alternative spellings for names, such as Digg, Flickr, Lyft, Reddit, Tumblr can contribute to the confusion branders have when it comes to deciding ‘how close is too close.’ We often hear, ‘If we add or remove a letter, will that help with the trademark clearance?’ The answer to that (as any trademark attorney will tell you) is ‘no, it won’t’—and while you may assume that those names were spelled creatively for trademark reasons, in most cases it was actually about securing a short domain."
How Related are the Goods & Services for the Trademarks?
In addition to evaluating similarities between trademarks, courts and the USPTO will also consider the relatedness of the goods and services that are sold under the trademarks at issue. The more similar the marks, the less related the goods or services need to be for a likelihood of confusion to be found.
The goods and services for two marks don’t need to be identical—or even competitive—for one of them to wade into infringement territory. The question, again, is whether consumers would be confused as to the source of the goods and services for each mark.
Even further, imagine that another company is using their mark to sell the same kind of goods that you sell as well as a different class of goods. In that case, the USPTO would almost certainly find relatedness of the goods between your mark and theirs high enough to pose a risk of confusion, as consumers may perceive that such goods emanate from the same source.
A good example of this is marks for hotels and restaurants. The USPTO routinely rejects trademark applications for hotels with marks that are similar to registered marks for restaurants. The catch is that hotels and restaurants are considered related since many hotels also offer food service and dining experiences.
The key to avoiding expensive and time-consuming likelihood of confusion issues? When selecting an ideal trademark, branders should invest time and resources into running a comprehensive trademark search. This process is one of Vivid IP’s specialties, and it’s an essential step towards determining whether a desired trademark is “too close” to other preexisting marks.
If clearing a trademark is on your to-do list, don’t hesitate to drop us a line below. The Vivid team is ready to step in to protect your brand.
