Trademarks Part 2: "Use" and "Confusingly Similar"

In order to be registered, a trademark must: 1) be Distinctive; 2) be in Use; and 3) must not be Confusingly Similar to other marks.

In this post, we discuss whether a trademark is in Use, and whether it is Confusingly Similar with another mark. In our previous post, Trademarks Part 1, we covered the Distinctiveness requirement.

Use

Whether a trademark is in Use is usually a much simpler test than whether or not the trademark is Distinctive. People often incorrectly assume that whoever invents a name or a brand owns the trademark.

The United States Patent and Trademark Office (USPTO) considers a trademark to be in Use if the following requirements are met:

1. The trademark usually has to be affixed to the goods themselves, or to the paper that comes with the goods, or to the displays associated with the goods, or the trademark must be on a website associated with the product. In other words, the goods must be conspicuously marked with the trademark.
2. The goods must be sold or transported in interstate commerce. Interstate commerce here means all commerce lawfully regulated by congress. The bar here is relatively low. For example, a tiny Maine maple syrup store with a humble website will likely be considered to be in interstate commerce.
3. The goods must be in commerce for the purpose of selling, and not merely token use. In other words, a company cannot ship goods for the sole purpose of making sure they can register a trademark. They must ship goods for commercial reasons.

It is worth noting that in some cases you can skip the Use requirement and file for a trademark before it is in use, so long as you have a bona fide intent to use it.

Confusingly Similar

If your trademark is both Distinctive, and in Use, it is probably a pretty promising trademark. However, when you go to register it with the United States Patent and Trademark Office (USPTO), sometimes they’ll tell you that they don’t think your trademark can be registered because it is Confusingly Similar to other trademarks that exist.

To determine whether a trademark is Confusingly Similar, your lawyer will probably go through the factors used in a case called DuPont. There are 13 factors in the DuPont trademark test. The DuPont factors ask you to consider how similar the trademark that you’re trying to register is to trademarks already out in the world.

Your lawyer will probably use a trademark search engine to find trademarks that may be deemed Confusingly Similar to yours. They will likely also conduct an internet search for domain names similar to your mark, which may—though not always—suggest the mark is already registered.

A search will always come up with at least a few names similar to yours. The lawyer will use their judgment and knowledge of the case law to determine how similar is Confusingly Similar, in which case you likely won’t be able to register your trademark. It is important to note that even if you succeed in registering, it is possible that you could still be sued for infringement down the line if the trademark is too similar to others.

If the mark is (1) Distinctive, (2) in Use, and (3) likely not Confusingly Similar according to the DuPont test, then the mark will probably be successfully registered, giving you all the benefits associated with a registered trademark.

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