Trademarks Cannot Be Too Similar To Others Advises Intellectual Property Lawyer Spotora

Trademarks are essential because they serve to identify the source of a particular service or goods.

But sometimes, there can be confusion – or the potential for confusion – in the marketplace. Trademark law is set up in part to prevent such occurrences from happening and many applications for trademarks are rejected each year if The United States Patent and Trademark Office believes that a proposed mark may infringe upon the rights of an existing mark or pending application.

What tests do courts use to determine a “likelihood of confusion”?

“The tests used are based on the Circuit Court involved and whether the trademark is Internet-based or otherwise,” said Anthony Spotora, a Los Angeles-based business and intellectual property lawyer. “Some of the most widely recognized tests, however, are the Du Pont Factors and the Sleekcraft Factors. These refer to specific court case rulings.”

What follows is a list of factors that courts may consider, though some factors may be given more weight than others. Also, trademark infringement issues are considered on a case-by-case basis. Trademarks don’t have to be exactly similar either – just confusingly similar.

Heading Off Problems Before They Occur

“A trademark is a sign or indicator that can include one or more of the following: a logo, a word or phrase and images,” Spotora said. How does one avoid potential trademark infringement problems when selecting a mark?

Common factors in testing for likelihood of confusion:

-Similarity of the two marks

-Whether or not the goods and services offered by the two parties are related or similar

-The strength of the marks

-Proof of actual confusion

-What channels each party markets their respective goods or services

-How customers are likely to purchase the goods or services

-Intent in selecting the mark

-Whether there might be expansion into other markets and how that might impact each party

If one is seeking to apply for a federally protected trademark and/or service mark and is unsure if his or her mark might infringe upon the rights of a registrant or common law rights holder, it would be wise to order a comprehensive trademark search report through an intellectual property lawyer and let him or her review the findings and advise on such.

An ounce of prevention is worth a pound of cure!

To learn more, visit

Tags: ,

This entry was posted on Tuesday, January 25th, 2011 at 7:13 pm and is filed under Uncategorized. You can follow any responses to this entry through the RSS 2.0 feed. Responses are currently closed, but you can trackback from your own site.

Comments are closed.