Getting Clear(er) on Trademarking

In trademark law, a business’s trademark (the name word, symbol or design that identifies the business, product or service) is known as the mark. In brand naming, marks range from weak to strong, with the weakest end of the spectrum being descriptive or generic marks and the strongest arbitrary or coined words.

Trademark law grants greater protection to strong marks, in particular names where the connection between the name and product isn’t clear. Amazon is a great example of this, as is Apple.

But even assuming you have developed a strong brand name, the USPTO (United Stated Patent and Trademark Office) or its counterparts in other countries, may refuse your mark for multiple reasons, including if it is overly descriptive (delicious cheese), primarily a geographic description (Maryland Crabcakes), or merely a surname, to mention a few.

In the main, however, registrations are refused on the grounds of “likelihood of confusion”. This means that the mark seeking registration is too close to an already registered or pending name.

And while identical marks can exist between two completely different products — think Dove ice cream bar and Dove personal care products — identical or related mark will be grounds for refusal.

By way of example: let’s say you are launching a new skin cream and you want to call it Soft Dove. Even though you’ve added an additional first word to the name (an added word or letter, particularly a first word, can sometimes help create distinction) it is unlikely that inclusion of the word “soft” would be strong enough to overcome the likelihood of confusion, especially as “soft” could be construed as a descriptive word. The problem is compounded given the prominence of the Dove brand.

Even if our fictitious Soft Dove offering is distinct from any Dove offerings — for example, a nail polish company wanting to register as Soft Dove — the name still might be too close for legal comfort, as nail polish and personal care products can be deemed related.

Unfortunately, there are no strict guidelines that determine what might be considered as causing a likelihood of confusion. But four top-line considerations are: 1) sound; 2) appearance; 3) meaning; and 4) commercial impression.

Let’s take a closer look.

Sound

Let’s say you are seeking to register your new company called Mary Poses. Another company that offers related goods and services is called Mariposa. Are these words the same? Do they mean the same thing? No. However, they are aurally very similar and, for this reason (assuming their goods and services are similar or related) there is a good chance the USPTO will issue a refusal on the grounds of similar sound.

Appearance

Marks that are visually similar can also run into issues. Using our fictional example of Mary Poses and Mariposa, both begin with ‘mar’ and ‘poses’ and ‘posa’ share a visual look.

Meaning

Having the same meaning in different languages is also grounds for refusal such as Monday House and Lundi House. Reversing the order — House Monday and House Lundi — will not help either.

Commercial Impression

Assuming goods and services are identical or related, names that convey a similar meaning and create a shared mental impression — e.g. Urban Dog and City Dog — are also grounds for rejection.

For a deeper understanding of what might be grounds for refusal of a trademark beyond the aforementioned, take a look at the USPTO guidance.

But while forearmed is forewarned, even trademark lawyers cannot predict with 100 per cent certainty whether or not your name will be accepted by the USPTO or its international counterparts. That said, you can be sure that the greater the likelihood of confusion between your name and a registered or pending mark, the greater the chance for rejection.

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