I. Introduction

The previous report discussed the simplified procedures and precautions for US trademark opposition and cancellation, comparing US and Chinese procedures. Besides specimens (mentioned in Part 2), likelihood of confusion refusals are a common occurrence in Office Actions (OAs) and a major obstacle to registration.

II. Factors Determining Likelihood of Confusion

Trademark similarity refers to resemblance in composition, sound, appearance, meaning, or arrangement of elements. Confusion arises when similar marks are used on identical/similar goods/services through related channels, causing consumer confusion. The TMEP [1] §1207.01(b) states that marks must be compared in their entirety, considering the specific goods/services.

Upon examination, the USPTO examiner searches for similar prior marks. If a similar mark is pending, the application may be suspended. If a similar mark is registered, an OA citing likelihood of confusion will be issued. Examiners typically assess confusion based on three aspects:

Sound, Appearance, Meaning (SAM):

① Sound: There is no 'correct' pronunciation. Public perception matters. (e.g., XCEED vs. X-SEED).

② Appearance: Similarity in textual/graphic elements, even with additions/deletions/substitutions, may cause confusion. (e.g., TMM vs. TMS).

③ Meaning (Foreign Equivalents): Foreign words are assessed based on their English translation. (e.g., HOLA (Spanish for HELLO) is compared to HELLO).

Goods/Services Classifications: Goods/services need not be identical or competitive. The key is whether consumers would mistakenly associate the sources. (e.g., ENYCE for custom car parts vs. ENYCE for apparel).

Commercial Impression: The focus is on the general impression retained by ordinary consumers, not a side-by-side comparison.

Conducting a thorough trademark search before filing can help identify potential conflicts, allowing for risk assessment and response preparation.

III. Differences Between Confusion Refusals, Opposition, and Cancellation

Confusion can also be a ground for opposition or cancellation, but the key differences lie in timing and procedure:

Timing: Refusal during examination; Opposition during publication period; Cancellation after registration.

Procedure: Responding to an OA is relatively straightforward. Opposition and cancellation involve six fixed stages , cannot be skipped or easily terminated.

A common crucial element for all three is specimens. Applicants must provide preserved specimens to their attorney, who assesses the viability of a response. The USPTO or TTAB then adjudicates based on the evidence. Outcomes include refusal/dismissal or coexistence with the prior mark.

If enforcing rights, opposition or cancellation can be initiated proactively, requiring swift action and evidence preparation. If defending against one, consider delaying tactics to gather evidence while adhering to strict deadlines.

IV. Conclusion

This report outlined the factors for assessing likelihood of confusion and the differences between refusal, opposition, and cancellation. Applicants should conduct pre-filing searches to mitigate risks. If involved in opposition/cancellation, prepare specimens and respond strategically. Next report, stay tuned.

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Pengzhuyun Policy Research Department

November 30, 2023

References:

[1] TMEP: https://tmep.uspto.gov/RDMS/TMEP/current