I have previously addressed reasons for caution when businesses select marks to represent their companies’ products and/or services. There is a third very important reason: A court or the United States trademark office concludes that your mark creates a likelihood of confusion with other marks for similar goods or services. In these circumstances you may be obligated to (i) pay damages to the mark owner in court, and/or (ii) forfeit your investment for associating your mark with your goods and services.
Likelihood of confusion exists whenever consumers mistakenly believe that your mark represents the goods and services identical or similar to your own, but that actually have a different source. This can occur under a variety of circumstance. This can occur when a company displays a mark that is identical to the mark of another business with similar although not identical goods. Unbeknownst to most business owners, a mark need not be identical to that of a competitor (or a non–competitor under certain circumstances). Moreover, if your goods and/or services are sufficient related or similar, then likelihood of confusion to consumers may occur because these marks create the same commercial impression.
You may very well ask yourself: what is a same commercial impression? Unfortunately, this determination requires a somewhat subjective component by a trademark examiner or a court, and so borderline cases may go either way. For example, consider the situation wherein you apply for federal registration of the logo ‘we thank you for the ride’ for car rental services. Suppose that another company has previously registered a mark ‘we love the ride’ for identical car rental services. The result? These two marks represent identical services, and both marks contain similar catch words (‘the ride’) and begin with ‘we.’
These above circumstances may be construed as providing similar commercial impressions. Such similar commercial impression for identical services could lead to the conclusion that consumers will be confused to the true origin of the car rental services. Consequently someone or ‘something’ must be relinquished with respect to mark acquisition. In litigation between two entities with unregistered marks, the entity with the prior use will generally win the day. During the U.S. federal registration process, the examiner requests the later filing applicant to explain why the later filed mark and associated products/services is not confusingly similar to the marks of a prior registration or a prior senior applicant.
I have drafted responses for refusals to U.S. federal registration based upon likelihood of confusion. There is a long list of necessary legal analyses and appended evidence for a document that may exceed 100 typewritten pages in length. This is indeed a headache and serious expense for the business owner who submitted the application. More sobering still is the investment in mark advertising and promotion to associate it with the products/services in the minds of the purchasing public. This investment may well be lost if the rebuttal does not convince the examiner or the court.
The most cost-effective manner to avoid this problem is commission of a comprehensive mark search of at least the United States, through your attorney. Such a search of the United States and Canada usually costs approximately $1,000.00 for the non–attorney search firm fee. This search will display common law marks, domain names, business names and state registered marks in addition to federally registered marks.
© 2011 Adrienne B. Naumann
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