Jarmal Richard, CEO, jdrlegal pty. ltd.
8 August 2006
In global commerce, a company’s trademark and trade dress is its signature and face to the market, often with considerable goodwill built up over time. If a company that trades in the US cannot register its established trademark with the United States Patent and Trademark Office (“USPTO”), it will likely risk challenges (including litigation) from owners of similar trademarks (who trade in the US) and/or have to invest in building goodwill in a new brand with US consumers, as well as registering that new brand with the USPTO. It is also important to remember that trademarks registered with the USPTO have jurisdiction across the continental US, and carry the full weight of US federal law and regulations, and, so, any enforcement actions, infringements of and litigious disputes regarding the same are handled by US federal courts.
The USPTO examining attorney assigned to a trademark application will, as part of his or her assessment of the merits of a trademark application, review the USPTO existing database of registered trademarks to determine what trademarks exist. The examining attorney will assess whether the applicant’s mark, when used in connection with the identified goods or services, resembles any current registered trademark with the USPTO, and whether the same is likely to cause confusion among consumers, cause a mistake, or deceive consumers.
When determining the likelihood of confusion, the factors considered by the examining attorney include:
If the trademarks being compared are identical or virtually identical, then generally, the relationship between the goods or services related to the respective trademarks need not be as close to support a determination by an examining attorney of a likelihood of confusion occurring. Further, if the goods or services associated with the respective trademarks under review are, indeed, closely related, then an examining attorney is likely to consider a lesser degree of similarity between the trademarks as grounds for rejecting the new trademark application under the ‘likelihood of confusion’ test.
US Courts have often determined that goods and/or services of two trademark holders do not have to be identical or directly competitive to find a likelihood of confusion. Rather, they need only be related in some manner, or the conditions surrounding their marketing be such that they could be encountered by the same purchasers under circumstances that could give rise to the mistaken belief that the goods and/or services come from a common source.
In the US, it is established legal precedent that consumers are likely to be confused by the use of similar marks on or in connection with goods and with services featuring or related to those goods.
If a company wants to achieve long term commercial success in the US, it should be serious about protecting its trademark(s) and brand image in that market, seek to determine unique and distinct trademarks and register them with the USPTO in a timely manner.