Trademarks registered symbols or designs that are unique in display. They act as brand identifier for your product in the market. However, to get a registered trademark for your brand, filing trademark application is very important. Once you file the trademark application with trademark office of your region, it undergoes rigorous examination by the examiner there.
It’s quite sure that, you will be taking every single measure to get your registration in one go only. However, missing few things unknowingly leads to rejection of your application. One of the most common reasons is trademark confusion in your application. If you will not take care of trademark confusion while filing trademark application, you will receive office action. This article will tell you everything about trademark confusion, so read till end.
Also read: Patent docketing to manage patent application process
What is trademark confusion in filing trademark application?
As told earlier, you get registered trademark only when your application is accepted at trademark office. However, when trademark confusion is there, your trademark application faces office action. This trademark confusion pertains to fact that, the trademark you are filing, already exists. Or the trademark that you are filing is already pending with trademark office by someone else with prior filing date.
Thus, it gives the signal to trademark office that trademark you are filing is not novel or unique. So, you will be infringing the trademark rights of a legible user who owns that trademark prior to you. Thus, your application faces rejection by trademark office. Hence, while filing trademark application you need to sure that your trademark is not confusing in nature.
There is no particular process to declare your trademark as confusing, it is a just a qualitative analysis. Like when two trademarks are closely similar, they are confusing trademarks. Thus, the one which is filed later will face office action.
Also read: Patent application form: Everything you need to know
Some famous cases Trademark Confusion
If you are thinking of filing trademark application, you must be aware of prior trademark confusion trademark cases. They are as below –
- Magnavox (electrical and sound equipment) vs. Multivox (musical instruments)
- Hpnotiq (liqueur) vs. Hopnotic (beer)
- Mr. Clean vs. Mr. Rust vs. Mr. Stain (all cleaning products)
- Canya (soft drinks) vs. Cana (frozen fruit and vegetable juices)
- Seycos (watches) vs. Seiko (watches and clocks)
Commons reasons for trademark confusion while filing trademark application
Before filing trademark application, you must know the important reasons for trademark confusion. If these reasons are found by examiner in your trademark application, it will receive office action.
- Filing under same goods or services –
You need to file your trademark application under one particular type of classification. It describes the type of service or product your trademark (or brand) provides. Suppose you apply for jewelry trademark in class 14, but somewhat similar trademark already exists in class 14 for bangles. Thus, similar trademarks are there for similar goods. Hence, the customers will think that, bangle and jewelry both belong to same company, which is actually not the case. This accounts for confusing trademark.
- Similar Sounding Trademarks –
When the trademark application you are filing has the trademark which has similar phonetics with a prior existing trademark. It also comes under confusing trademark. Thus, your application will face office action. For example, mukka, mucc@, and mucca are phonetically similar.
- Similar appearing trademarks –
Your trademark might be similar appearing to an already existing trademark. It will also fall under confusing trademark. Like, trademark “FLITE”, already exists in bold font, and suppose you file another trademark “FLITE” with plain text, then it is similar appearance.
Also read: IP Paralegal for Patentability Search
Whom to Choose As Your Partner in Filing Trademark Application?
Filing trademark application requires critical thinking and extensive research. Without it, you can’t develop a novel trademark, to file with trademark office. Thus, you will need an expert professional help to avoid selecting confusing trademark and develop suitable trademark. For this purpose you can select us, “Patent Paralegal Force”.
We work with highly professional team working with state of the art tools. Our continuous monitoring reports give you clear idea to develop a best trademark for your brand. Thus hiring us, your trademark filing process becomes smooth and error free. Read more about us here.
Other related articles:
A complete guide to trademark in USA
Comparing laws of Industry design in different jurisdictions