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  • Writer's pictureSheila Gibson, Esq

Tomatoes, Tomatos. Does spelling make it different?

The short answer is most likely not. You would be running a very high risk that the examining attorney will refuse registration based on a likelihood of confusion with the existing mark.

Unfortunately, we see this a lot in our practice. Applicants come to us with applications they filed themselves that have been refused by the trademark examiner for likelihood of confusion. The applicant is equally confused often telling us "But I searched it and the mark was available?!?!"

Trademark searches are not like domain name searches. Just because a search of the trademark office database does not turn up a result, does not mean the mark is available.

This is because the search capability of the trademark office search engine only pulls up any marks that include the mark EXACTLY AS YOU SPELLED IT. But the trademark examiner search tools will look for whether your mark is SIMILAR to an existing mark and thus could result in a likelihood of confusion with an existing mark or the mark of a prior filed application.

The purpose of a trademark is to identify the source of the goods or services, and so trademark laws serve to avoid consumer confusion as to that source. To evaluate whether a likelihood of confusion exists, the examining attorney takes into account the following factors:

- Similarity of the marks. Examiners look at the (1) sight--whether the marks appear the same, (2) sound--whether the marks sound the same, and (3) meaning--whether the marks have the same meaning. Thus, if your mark has a different spelling but sounds the same as an existing mark, you will likely be refused for a likelihood of confusion with that mark.

- Similar markets. Trademark protection is limited to the goods or services identified in the application. Thus, examiners will look at whether the goods and services of the two marks belong to the same market or field, a closely related market or field, or a market or field of likely expansion.

Most examiners stop at the first two factors, but there are several others to consider when evaluating likelihood of confusion (or arguing that there is not a likelihood of confusion). These include:

- Similarity of the trade channels.

-The conditions under which the goods or services are purchased--impulse buys or careful, sophisticated purchases.

- The fame of the prior mark.

- The number and nature of similar marks in use on similar goods.

- The nature and extent of any actual confusion.

- The length of time during and the conditions under which there has been concurrent use without evidence of actual confusion.

If you receive a refusal for likelihood of confusion, that doesn't mean that you can't overcome it, but you will have to convince the examining attorney that a likelihood of confusion will not exist. This is quite often difficult and costly to do. The best way to avoid a refusal for likelihood of confusion is to have a trademark attorney perform a comprehensive search prior to filing your trademark application to assess the risk that an examiner will refuse your application.

**This is for general and educational purposes only and is NOT legal advice. For legal advice, contact an attorney or book a consultation with our firm.**

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