Likelihood of confusion

Considering The Likelihood Of Confusion Before Filing A Trademark Application

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Before filing a new trademark application, overcoming the likelihood of confusion between your proposed mark with similar earlier registered trademarks and currently pending trademark applications should be your first and main concern.

If a brand owner has addressed the such issue from day one, he or she would have a better chance of success in registering and protecting his or her mark.

In this article, we will discuss how can we measure the likelihood of confusion as one of the main potential obstacles that an applicant might face during the pending process of trademark application.

In determining the likelihood of confusion before filing a trademark application, we will consider the following factors: the strength of the mark, the similarities of the mark, the closeness of the goods/service, and the trade channels where the goods/services are going to be marketed, advertised or distributed.

The Strength of a Mark

The power of a trademark to distinguish the source of goods or services is its strength. Even when the goods or services are the same and look the same, by their trademarks we can easily tell that the products are coming from different sources.

Both SHARP and POLYTRON are trademarks for television, but the consumers can still identify which products belong to which brands or sources. 

This distinctive power is what makes a trademark strong in the eyes of consumers.

The distinctiveness of a particular mark can be categorised in varying levels from the most distinctive (the strongest) to the least distinctive (the weakest):

Fanciful mark— These are made-up words, and there is no correlation to the goods or services being described or even to a known meaning. An example would be Google, Yahoo, Exxon, etc. A trademark made up of fanciful terms has the strongest level of distinctiveness.

Arbitrary mark— This mark consists of existing or generally known words that have no correlation or meaning to the described goods or services. This would include Amazon (known as the name of a river in South America) and its e-commerce and cloud computing services. A trademark made up of arbitrary terms has a strong level of distinctiveness. 

Suggestive mark — The mark suggests a partial relation or meaning but still does not describe fully the goods or services. Examples would be MicroSoft (for software products), DanaPaint (for paints products), Citibank (for financial and banking services), Telkomsel (for telecommunication services), etc. A trademark made-up of suggestive terms could still be distinctive but it is not as strong as a trademark which consists of fanciful or arbitrary terms. 

Descriptive terms — These terms describe characteristics of the products or the product themselves including the qualities, the nature, any information about the goods or services, or commercial activity. Descriptive terms are distinctively weak and cannot be registered as trademarks unless they have established a secondary meaning (a powerful brand in the mind of the consumers).

Generic terms – These terms cannot be registered or protected as a trademark. They are not distinctive because they represent a type or category of goods or services. A generic word is also what the public understands to be the common name of the product or service in question—for example, “clock” is a generic word for timepieces or a previously registered fanciful trademark such as “ASPIRIN” which now has been considered as a generic word for pain relieving medicines.

Now we know what we are looking for. Ideally, we need to create a fanciful or arbitrary mark for our new trademark.

To explain the concept, we are creating a fictitious new proposed trademark “PURSLAIN” for protecting the goods “typewriters” in International Class 16.

Our first homework is to consult any dictionary to check if “PURSLAIN” is meaningful at all in any language. The easiest way to do this is, of course, to search for the meaning through Google Search or similar online search tools. If the word “PURSLAIN” has any meaning, it is no longer a fanciful mark.

The dictionary look-up turns out to show that “PURSLAIN” is actually a meaningful English word. It is a synonym of Purslane which is a green, leafy vegetable or plant that can be eaten raw or cooked. It is known scientifically as Portulaca oleracea and is also called pigweed, little hogweed, fat weed and pusley.

Although the search for a strong distinctive fanciful mark has failed, we still have a chance to register it as an arbitrary mark which should also be a strong mark although not as powerful as a fanciful one.

With an arbitrary mark, we can use a meaningful common word like PURSLAIN which doesn’t have anything to do with my proposed goods “typewriters’ semantically or descriptively.

The Similarity of the Marks

We can now say with confidence that we have a strong (although not the strongest) and distinctive arbitrary mark that should have a good chance to be registered with the Trademark Office. We are ready to file my trademark.

But wait, before we can do that we need also to have a strong relative ground to file the proposed trademark, and we can do so by conducting a preliminary trademark search with the Trademark Office database. If we want to register the trademark in Indonesia we would need to search with the DGIPR Database.

You can do the search by yourself (if you know what you’re doing), or it is highly recommended to request assistance from a registered Intellectual Property Consultant to professionally conduct the search for you and to provide you with a legal opinion regarding the chances of success for registering your trademark.

The preliminary search result discloses that there is an earlier registration of trademark “ZEN (FINE PORCELAIN TABLEWARE)” Registration No. IDM000823117 for goods in International Class 16 including the goods “typewriters”. 

Other not-so-similar existing trademarks appear in the search result, but I will focus on the one mentioned above for the sake of further explanation. 

Let’s now compare what similarities that exist between the proposed trademark “PURSLAIN” and the earlier trademark “ZEN (FINE PORCELAIN TABLEWARE)”.

1. Similarity in Appearance

Seemingly “ZEN (FINE PORCELAIN TABLEWARE)” is cited because of the word “PORCELAIN” in the tagline. But we can say that we can still differentiate the look between “PURSLAIN” and “PORCELAIN”. So, there should not be any likelihood of confusion between the two marks.

We could also notice that “PORCELAIN” itself is not the main element of the mark. It is only a part of the tagline of the trademark “ZEN”. 

So, “ZEN” is the trademark, not the descriptive tagline “FINE PORCELAIN TABLEWARE” (which is not a trademark unless it has a secondary meaning, but it is another topic for another day). 

This fact alone should have cleared up the likelihood of confusion issues in the first place, and the trademark “PURSLAIN” could be processed further to be registered. For our further discussion and study in our case example, however, let’s pretend that the “PORCELAIN” is a trademark or a part of the trademark.

2. Similarity in Sound

Although both words are spelt differently, there is a phonetical closeness between the two words. Listen to how they’re being pronounced: “PURSLAIN” and “PORCELAIN”.

They look different but sound similar. So, there is a likelihood of confusion between both marks if “PORCELAIN” is the main element of the trademark. Which in this case, is not.

3. Similarity in Meaning or Connotation

Each mark has its own different meaning. “PURSLAIN” refers to a type of edible succulent plant or vegetable, while the word “PORCELAIN” refers to articles made of white vitrified translucent ceramic. With such difference in meaning, “PURSLAIN” will not lead to the likelihood of confusion with the mark “ZEN (FINE PORCELAIN TABLEWARE)” or even “PORCELAIN” if we pretend it is the main trademark.

The Closeness of the Goods/Services

Both “PURSLAIN” and “ZEN (FINE PORCELAIN TABLEWARE)” cover the goods “typewriters” which is another similarity between them. This closeness in the coverage of the goods could lead to confusion if the consumer cannot easily tell the difference in the appearance between the marks. In this case, they can. So, the likelihood of confusion is impossible.

The Trade Channels

Every product will have its own channels of trade or marketing. Whether the product is sold online or offline. 

Similar products would normally be sold in the same trade channel (if sold offline) or in the same category (if sold online). Products like “typewriters” as in our case example are most likely to be sold in bookstores, stationery stores, electronic stores, or even antique stores, etc. The similarity in trade channels could also lead to the likelihood of confusion.

But, it is not necessarily so. There could be many other ways or channels they could sell or market the typewriters to the consumers. So, how and where the trademark owners sell their products should be proven with the documentation of sales and advertising.

Applicants of a new trademark application should know or should have a plan on which channels of trade they would sell or distribute their products bearing the mark. They would conduct their own commercial research to check if there are similar brands or trademarks for the same kind of products in those channels of trade.

For the purpose of simply filing a new trademark application, we view that the above consideration: the strength of the mark, the similarities of the mark, the closeness of the goods/service, and the trade channels should be sufficient to decide if the likelihood of confusion exists and could potentially block the proposed mark from being registered.

There are other ways of testing the likelihood of confusion, but they would be more relevant in considering the trademark infringement case where the conflicting marks have actually been used in commerce. 

In trademark infringement cases, the other following factors should be put into consideration by the court: Proximity of the goods; Evidence of actual confusion; Marketing channels used; Type of goods and the degree of care likely to be exercised by the purchaser; Defendant’s intent in selecting the mark; Likelihood of expansion of the product lines. 

For further reading, please refer to the primary test comes from the Ninth Circuit Court of Appeals and is found in AMF, Inc v. Sleekcraft Boats, 599 F.2d 341 (C.A.9) 1979 at this link here and here

Takeaways

Filing a trademark application for registration is not always a smooth process. Applicant should have a strong basis for filing his or her trademark to the Trademark 0Office.

First, the applicant needs to make sure that his or her trademark is distinctive enough to distinguish his or her goods/services from other sources of the same kind of goods/services. Applicant needs to come up with either fanciful, arbitrary or at least suggestive marks to have a strong distinctiveness for his or her mark.

Next thing, the applicant needs to consider the similarity of the mark in relation to the existing similar marks which have been previously registered or applied at the Trademark Office. Based on this factor, the applicant should have an initial idea if there is a likelihood of confusion between his or her mark with those of the existing ones.

Lastly, the applicant should also consider if there is a closeness between his or her goods/services and those of the earlier marks, and if the applicant has decided in which trade channels he or she is going to sell the goods/services. Doing all of the above considerations before filing a trademark, will put the applicant in a better position to successfully register his or her trademark with the Trademark Office

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