Likelihood of Confusion

Collen - We represent corporate clients in U.S. trademark opposition and trademark cancellation proceedings that are based on a likelihood of confusion with a preexisting trademark.

Likelihood of confusion is one of the highest-cited reasons that a trademark application is refused registration.  The statutory basis may be found in Section 2(d) of the Trademark Act.  In order to prevail in a trademark opposition or trademark cancellation based on likelihood of confusion, the moving party must establish the following:

  1.   Standing.  Proof that the plaintiff has a legitimate stake in the proceeding and will be damaged if the defendant's application or registration is maintained.
  2.   Priority.  To establish priority of use, a party must show that its owns a preexisting trademark registration or common law use that has not been abandoned.  A plaintiff may prove prior use through either actual use or use analogous to trademark use, such as advertising brochures, newspaper publications, or websites which create a public awareness of the designation of the trademark as an identifying source.

Likelihood of Confusion Factors.   In addition to establishing standing and priority, the plaintiff must establish that the likelihood of confusion factors analyzed by the U.S. Trademark Trial and Appeal Board weigh in its favor.  These factors include a comparison of the parties' marks in relation to the:

  • Similarity of the marks
  • Similarity of the goods or services
  • Similarity of the trade channels
  • Evidence of actual confusion, if any
  • Fame of the prior mark
  • Number of similar marks in use on similar goods
  • Conditions under which purchases are made

and other relevant factors that are relied on by the Board.

Proceeding with a trademark opposition or cancellation matter requires an experienced trademark attorney that can weigh the merits of litigation versus other dispute resolution alternatives.  To discuss a trademark opposition or trademark cancellation case based on a likelihood of confusion, please contact James Hastings or a member of the Collen TTAB litigation team.

A recent trademark opposition decision by the U.S. Trademark Trial and Appeal Board is an example in how an Opposer should properly establish use analogous to trademark use.

In Dexas International, Ltd v. Ideavillage Products Corp., the Opposer filed an Opposition against Applicant’s Mark, SNACKEEZ DUO  for “beverage ware; household containers for foods; thermal

Trademark image

A recent trademark cancellation action by Major League Baseball against an individual who had a registration for sports apparel is another victory for well-established brand names.

In Major League Baseball Properties, Inc. v. Christopher Webb, MLB petitioned to cancel U.S Reg. No.  4472701 for the mark MAJOR LEAGUE ZOMBIE HUNTER and design, for “clothing,

Trademark image

Prevailing in a TTAB opposition proceeding against a food and beverage company proves to be sweet for the makers of Nutella.

In Ferrero S.p.A. v. Ruchi Soya Industries Limited,  Ferrero, who is the owner of the NUTELLA spread brand, opposed Applicant’s mark NUTRELA for a wide variety of food and beverage products in International

A recent trademark opposition is a lesson in what happens when there is a crowded field of similar trademarks.

In Inter-Industry Conference on Auto Collision Repair v. LM Industries Group, Inc., Applicant sought registration of the mark ICAR or land vehicles in International Class 12.  Opposer filed a notice of opposition against the ICAR application

For purposes of likelihood of confusion, not all beverage trademarks are created equal.

In Patrón Spirits International AG v. Conyngham Brewing Company, the Applicant sought registration of the mark PIRATE PISS for “beer, ale, and lager” in International Class 32.   Opposer Patron had opposed the application based on its ownership of the previously registered

The U.S. Trademark Trial and Appeal Board has disclosed first and second quarter filing and pendency statistics for 2018.   Year to date (YTD) statistics as compared to the same period in 2017 include the following:

U.S. Trademark Trial and Appeal Board filings

  • extensions of time to oppose:  9,498  (+2.7% YTD)
  • trademark oppositions: 3,211 (+4.3% YTD)