The similarity between trademarks is important in two scenarios, registration or litigation. Similarity is a concept usually used in the context of copyright law because similarity is important to establish copyright infringement or copyrightability. In the trademark law context, similarity is important because the USPTO wants to avoid the co-existence of trademarks that are likely to confuse. Similarity by itself is not an issue; however, if two trademarks are so similar that a potential consumer could be confused about the commercial source of goods or services, then trademark similarity can be a problem.
Trademarks' similarity in the context of registration
When an applicant applies to register a trademark, the USPTO examining attorney researches to establish if there are other similar trademarks already registered. If there are trademarks using similar words, logos, or features, this is not a problem if each trademark is used to distinguish different and unrelated goods or services. In other words, if IVON and IVONN are registered but one is used to mark financial consulting services, and the other is register to promote organic goods, this is unlikely to be a problem. Considering this, before an application for registration is filed, attorneys conduct a clearance search, which allows them to advise clients regarding the viability of a trademark or the existence of risk factors.
The specific case of famous trademarks
Even though similar trademarks in different industries can co-exist, when a trademark is very popular among consumers or when it has achieved recognition in more than one market, that trademark can be categorized as a famous trademark can prevent the registration of similar trademarks, even if they are used in a different industry. For example, even though the Nike logo is used especially to promote sports clothing and sports footwear, it is unlikely that Nike will stand by while another tries to register a similar trademark in the health industry or for purposes of financial coaching services. Nike has gained such a level of recognition that it is unlikely that trademarks similar to Nike's logo are registered.
What could happen if similar trademarks are filed for registrations?
If two or more similar trademarks are filed for registration before the USPTO, the examining attorney will probably issue an Office Action requesting the applicants to offer evidence that proves there is no likelihood of confusion; that is, evidence that proves that a potential purchaser would be able to distinguish between the applicant's goods or services.
Trademarks' similarity in the context of litigation
Trademarks' similarity issues arise in the context of litigation when a trademark owner files a complaint against another alleging trademark infringement, counterfeiting, unfair competition, and trademark dilution. In this case, the owner of a trademark states that another is using its trademark without authorization, that the coexistence of the two marks is likely to cause confusion, and/or that the defendant's goods or services are being promoted as if the trademark owner offered them.
Section 32 of the Lanham Act, 15 U.S.C. § 1114(1), governs trademark infringement claims. To file a claim according to this section, the trademark of the plaintiff must be registered. The basic elements of this cause of action are that:
- Plaintiff owns a valid and legally protectable trademark.
- Defendant used that mark or a similar mark without consent.
- Defendant's use of the mark at issue has caused a likelihood of confusion.
Trademark dilution is a cause of action raised by the owners of a famous trademark. The rationale behind trademark dilution is that an unauthorized third-party using a famous trademark is likely to reduce the public's perception that the famous mark signifies something unique, singular, or particular. There are two types of dilution: dilution by blurring and dilution by tarnishment.
- Dilution by blurring occurs when a famous mark's distinctiveness is slowly whittled away by a similar mark used in connection with different goods or services.
- Dilution by tarnishment occurs when a famous mark is linked to shoddy quality products or is portrayed in an unsavory context, thus harming its reputation.
Counterfeiting takes place when a third-party try to imitate another' mark, with the intent to steal, destroy, or replace the recognition of the original, or to deceive consumers.
Likelihood of confusion
The last concept that is important to explore thinking about similar trademarks' co-existence is likelihood of confusion. Likelihood of confusion is a legal term that trademark common law has developed with time. The most famous decision about likelihood of confusion is the In re E. I. du Pont de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973). According to the Du Pont case, there are several factors that an agency can consider to determine if there is a likelihood of confusion between two marks, such as appearance, sound, connotation, and commercial impression. An agency may also consider the similarity and nature of the goods, trade channels, consumers, and marketing strategies.
- Similarity between trademark is important because the USPTO wants to avoid the registration of a trademark can be the source of confusion for consumers.
- Similarity can be a problem if two similar trademarks are distinguishing the same type of goods or services.
- Similarity is essential in the context of litigation because it is necessary to demonstrate a likelihood of confusion.