Having a distinct trademark is one of the most important things that you can do for your company as it can set your brand apart and evoke a strong feeling of loyalty from your audience. However, it is important to be wary of how you word or design trademarks as there are potential risks such as copyright infringement and, what we’ll discuss below, trademark likelihood of confusion. In this blog post, we will discuss the differences between similar and identical trademarks and how both of these may lead to a trademark likelihood of confusion. 

First of all, what are Similar Trademarks?

Similar trademarks are those that share visual, phonetic, or conceptual similarities that may lead consumers to believe they are associated with the same source or brand.

Factors to Consider in Determining Similarity

• Visual Similarity: Focuses on the appearance of the trademarks.
• Phonetic Similarity: Considers how the trademarks sound when pronounced.
• Conceptual Similarity: Examines the overall idea or meaning conveyed by the trademarks.

What are Identical Trademarks? 

While similar trademarks pose a risk of confusion, identical trademarks can have even greater legal implications. Identical trademarks are the same in appearance, sound, or meaning.

Difference Between Similar and Identical Trademarks

Identical trademarks have little to no differences, while similar trademarks have varying degrees of resemblance. In short, identical trademarks are essentially duplicates, while similar trademarks share some characteristics but are not the same.

How Can Identical and Similar Trademarks Contribute to a Likelihood of Confusion?

While distinct trademarks can set your brand apart, both identical and similar trademarks pose risks of what’s known as “Trademark Likelihood of Confusion.” This likelihood refers to the probability that consumers might mistakenly believe goods or services offered under one trademark are associated with or endorsed by the owner of another trademark. This assessment is critical in trademark law to prevent deception, protect the distinctiveness of well-established brands, and determine eligibility for trademark registration with the USPTO.

Factors considered include the following: 

The similarity of the Marks in terms of: 

• • Sound: If two trademarks sound alike when spoken, they can be considered confusingly similar, even if they are spelled differently.
•  Ex: “Kleenex” and “Kleentex” might be considered confusingly similar due to their phonetic similarity.
  • Meaning: Trademarks that convey the same or similar meaning can confuse, even if they look or sound different.
•  Ex: “Swift” and “Rapid” could be confusing if used for the same type of product since they both suggest speed.
  • Design: The visual appearance of trademarks, including logos, fonts, and color schemes, can lead to confusion if they are similar.
•  Ex: A logo with a red circular emblem and white script text might be confused with Coca-Cola’s logo.

Similarity of the Goods or Services:

• • Trademarks used on similar goods or services are more likely to be confused than those used on unrelated products.
•  Ex: “Delta” for airlines and “Delta” for faucets might not be confused due to different services, but “Delta” for airlines and “Delta” for travel services could be confusing.

Prominence of the Competitor’s Mark:

• • A well-known competitor’s mark may be more likely to be confused if a new trademark resembles it.
•  Ex: A new tech company using a bitten Apple logo similar to Apple’s logo could cause significant confusion due to Apple’s strong brand presence. This is also the case with the “Kleenex” and “Kleentex” examples above.

Channels of Trade and Advertising

• • If two trademarks are marketed through the same channels or to the same customer base, the likelihood of confusion increases.
•  Ex: Two human resources companies with some resemblances have advertised their services on both Instagram and LinkedIn, this can raise confusion for both of their customer bases. 

Best Practices for Preventing Trademark Likelihood of Confusion

Trademark likelihood of confusion can lead to potential legal actions such as infringement lawsuits, which may require you to not only cease using that similar trademark but also incur costs that could have been prevented. To mitigate the risks and likelihood of confusion and save potential headaches in the long run, below are a few best practices:

• Assess your trademark regarding the factors for trademark likelihood of confusion

Before adopting a new trademark, evaluate it against common factors that contribute to the likelihood of confusion. As mentioned above, some of these factors are the similarity of the marks in terms of sound, meaning, and design; the similarity of the goods or services; the prominence of the competitor’s mark; and the channels of trade and advertising.

• Conduct Thorough Trademark Searches

Perform extensive searches to identify any existing trademarks that might be similar to your proposed trademark. This helps avoid potential conflicts and legal issues. It’s best to seek help from a trademark lawyer as a properly conducted comprehensive clearance search typically requires technical knowledge and careful analysis. 

• Register Your Trademark

After completing the steps above, applying to register your trademark with the relevant government authority (such as the USPTO in the United States) can help avoid claims of likelihood of confusion. Trademark registration also provides legal protection and grants exclusive rights to use the mark in various settings, such as marketing and commerce.

Just because you think you have a unique trademark doesn’t mean there won’t be potential setbacks. Many companies have thought that the trademark registration process would be a walk in the park, only to find out that the USPTO refused their mark due to a likelihood of confusion. This can lead to a roller coaster ride of challenges for your company.

To avoid those challenges, keep the common likelihood of confusion in mind, follow some of the best practices above, and be proactive with your trademark management. Also, seeking guidance from an experienced trademark lawyer at a reputable trademark law firm (often in conjunction with a business law firm) can greatly assist in navigating the problems of a likelihood of confusion and increase the chances of successful trademark registration. 

Need legal advice from a seasoned trademark attorney? Feel free to contact us today at 844-2-TKALAWFIRM or visit www.tkalawfirm.com to learn more about how we can help! ☑️☑️☑️

This information is presented for general informational purposes only, is not to provide legal advice, and is not intended to represent a complete list of all possible issues. This information should not be construed as legal advice and does not create an attorney-client relationship. You should seek the advice of an attorney regarding your particular situation.