Likelihood of Confusion – 2(d) refusals issued by the USPTO

One of the most difficult problems trademark applicants encounter after they have filed a trademark application with the USPTO is the issuance of a refusal based on an asserted likelihood of confusion with a prior registered mark – or a potential refusal citing a prior filed application that has not yet registered.

Sometimes the examining attorney at the USPTO is clearly correct to refuse registration – for example, if you applied to register ZAPPY for a line of sweaters, and there is a prior registration for ZHAPPY for clothing, including sweatshirts.  In this case it’s clear the marks sound similar, the goods are closely related and the overall commercial impressions of the two trademarks could result in consumers believing that the goods sold under ZAPPY emanate from the same source as the ZHAPPY goods.

But what if you applied to register ZAPPY NEW YORK RAGZ for your sweaters, and the examining attorney at the USPTO refused registration citing ZHAPPY HAUTE COUTURE?  Don’t laugh – it could happen. 

There is trademark doctrine that states that, although marks must be examined in their entireties, one portion of a mark may be dominant in creating the commercial impression of the mark.  Additional doctrine holds that often the first portion of the mark is dominant, and other doctrine holds that descriptive terms are typically never dominant.  Thus, although it would seem to most people that there is no confusing similarity between ZAPPY NEW YORK RAGZ for sweaters, and ZHAPPY HAUTE COUTURE for sweat shirts and other clothing items, a USPTO examining attorney would almost certainly issue a refusal of ZAPPY NEW YORK RAGZ citing the prior ZHAPPY HAUTE COUTURE mark. 

This is because the USPTO examining attorney would first determine that the dominant terms in both marks are ZAPPY and ZHAPPY because NEW YORK is geographically descriptive (assuming your business is located in NY or the clothing is manufactured or designed there) and RAGZ is descriptive of clothing because the fashion industry is also known as the rags trade and “ragz” is a deliberate misspelling of rags.  Furthermore, the wording HAUTE COUTURE is descriptive because it refers to the fashion industry.  Thus all the terms in the two marks other than ZAPPY and ZHAPPY are descriptive and weak terms.  Worse, ZAPPY and ZHAPPY are both the first terms in each trademark and therefore under certain trademark cases, likely to be dominant. 

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You would be left having to argue that there is no likelihood of confusion because the marks must be examined in their entireties – as they are perceived by consumers in the marketplace - and when viewed in their entireties the two marks neither look alike, nor sound alike nor create similar overall commercial impressions.  You would not be likely to prevail, unfortunately, and your application to register ZAPPY NEW YORK RAGZ would probably end up in the dustbin of history.

This illustrates one reason why it is so important to consult with an experienced trademark attorney when initially selecting your new trademark, and why it is critical to properly screen your new trademark - including having a comprehensive trademark search conducted -- prior to using or applying to register any new trademark.