Rules of thumb for evaluating similar marks

20 June, 2019

Whether you’re already a trademark owner or are hoping to secure one, chances are that at some point, you’ll be faced with the task of trying to determine whether another mark is too similar to yours.

Maybe you’re conducting a basic search of the US Patent and Trademark Office (USPTO) database to make sure your brand isn’t infringing on an already registered mark before you submit your application. Or maybe you’ve subscribed to trademark monitoring and are reviewing the latest hits in your Alert Report. While it’s always smart to contact a trademark attorney for expert advice pertaining to your specific situation, there are a few broad rules of thumb that can help you start to make heads or tails of whether a mark is too similar.

 

Why is similarity such a problem, anyway?

Trademarks are words, phrases, symbols, and/or designs that identify and distinguish the source of products or services of one party from competitors. But at a more fundamental level, a brand is a business’s identity; it represents products / services but also market reputation. It’s a promise of consistency and reliability to customers – the foundations of trust and loyalty. If a trademark is too similar to another, there’s a good chance that customers will get confused and assume that there’s a relationship between the two brands when there isn’t one. Often this leads to erosion of customer trust, lost revenue, and a damaged reputation at best, or an entire rebranding of your business or product at worst – and that’s obviously a serious expense! So it’s worth putting in the effort up front before you register your mark to make sure your brand is unique. And the same goes for post-registration to make sure your brand stays unique: trademark owners are responsible for enforcing their rights, so you need to stay vigilant for infringers, whether accidental or intentional.

When it comes to word marks, it’s easy to spot identicals, but ones that sound the same, look the same, or have similar meaning should also catch your attention.

If you come across one of these marks, the next step is to determine whether the area of business to which the mark pertains – known as goods and services – overlap with yours.

The USPTO notes that “even if two marks are found to be confusingly similar, a likelihood of confusion will exist only if the goods and/or services upon which or in connection with the marks are used are, in fact, related.” A good test to determine relatedness is considering whether it would be likely for the products or services covered by both marks to come from one source.

Think of “Delta”, for example: that’s the brand of an airline, but also a faucet manufacturer.  If you’re not familiar with the latter, the chances are still really low that you’d think the airline company was selling sinks, now, too. Their products and services are so unrelated that there’s no natural reason for consumers to make a connection where there isn’t one, so it’s fine for these two companies to both register and use the same mark for their businesses. However, if there was another company by the name of “Delta”, “Delti”, or another confusingly similar name, selling travel insurance, that would be problematic.

So if another mark is both similar to your mark in one of the ways described above and the goods and services are related, that’s cause for concern.

It might be time to seek the advice of a trademark attorney to determine the best next steps.