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 trademark registration for nutritional supplements was recently cancelled by the U.S. Trademark Trial and Appeal Board.

Background.  The case, Food Global Innovation GP LLC v. Tuong Nguyen, sought cancellation of U.S. Reg. No. 4799824 of VITASTRONG and Design was nutritional and herbal supplements.  The grounds for cancellation were abandonment.   The Petitioner had