Business Law Blog

How An IP Attorney Can Help Overcome The Likelihood Of Confusion Rejection

Posted by Amanda Butler Schley | Jul 07, 2024 | 0 Comments

Federal trademark registration through the United States Patent and Trademark Office (USPTO) can confer a number of intellectual property (IP) protections that may help to discourage trademark infringement and make it easier to pursue legal remedy if infringement does occur. Business owners who are aware of these advantages often make registering their trademarks with the USPTO a priority as they build their brands. Achieving a successful registration is a complicated process, however, and many USPTO trademark applications meet with an initial refusal. One of the most common reasons for the USPTO to refuse a trademark application is likelihood of confusion. If your business has received a likelihood of confusion rejection from the USPTO, an IP attorney may be able to review your trademark application and suggest strategies for overcoming the refusal. Schedule a consultation with one of Business Law Group's experienced IP attorneys by calling (504) 446-6506 today.

What Does IP Law Deal With? 

IP stands for "intellectual property." Intellectual property itself is made up of intangible assets like music, inventions, or narratives – products of the mind (hence "intellectual") that hold or contribute some form of value. The owners of these intangible assets have rights over their property in the same way that the owners of physical property have rights over tangible assets such as cars, furniture, or cash. 

Intellectual property law, often called "IP law," is the area of legal practice and jurisprudence that deals with these intellectual property rights. Attorneys practicing in IP law assist their clients with the enforcement of their rights, and in many cases they may also provide services to assist clients in registering their IP or in negotiating licensing agreements to benefit from their intellectual property or to contract for the non-infringing use of another party's protected material. 

What Is the Difference Between a Patent Attorney and an IP Lawyer? 

Much of the jurisprudence in IP law is concentrated on securing the exclusivity of creators' rights to benefit from their ingenuity and mental labor, so IP and business law are frequent bedfellows. Some IP attorneys only handle business matters as these relate to a specific type or type of intellectual property – for instance, a patent attorney who is open to helping a client negotiate a contract for developing their patented invention may refer the same client to another firm when they have questions about selling their business or acquiring another company. On the other hand, IP lawyers who are particularly interested in seeing how IP development furthers their clients' overall goals may practice in business law more broadly, and business law firms that aim to offer a comprehensive suite of services will often try to keep at least one IP attorney on their rosters.

Trademarks in Business Law

Trademarks are one of the most common types of IP for a business law firm to handle. Trademarks have a special relationship to business law because almost every business has a trademark, many businesses make establishing their trademark central to their branding strategy, and trademarks are (by comparison to other forms of IP) especially likely to be created "in-house," by the entrepreneur or core team, rather than acquired. If you have questions related to licensing or purchasing the rights to intellectual property you need for your business, consider scheduling a call with an IP attorney at Business Law Group to discuss your options.

Common Trademark Services Frequently Offered by Business Law Firms 

While not all business law firms will handle trademark matters, many of them do offer services in trademark registration and protection. Trademark protection services may include monitoring for and responding to potential instances of trademark infringement. When a case of likely infringement is found, usually the goal is to make trademark litigation unnecessary by securing a satisfactory outcome through communication with the infringing party. 

Services in trademark registration, on the other hand, aim to guide clients through the complex and often time-consuming process of conducting research on existing trademarks using the USPTO's trademark search tool, compiling appropriate documentation to complete an application, and then submitting the application and following its progress through the USPTO examining process. Trademark attorneys may also serve clients by providing advice and support for overcoming initial trademark rejections. 

What Is the Likelihood of Confusion Rejection? 

Trademarks serve a practical function by distinguishing the goods and services one party brings to the marketplace from similar items offered by their competitors. This practical function forms the common law basis for the intellectual property rights associated with trademarks. 

While business owners are often focused on the value of brand recognition, however, jurisprudence has long acknowledged that consumers have a vested interest in the legitimate use of trademarks in helping them distinguish among multiple sources offering similar goods or services in a crowded market. Trademarks that are closely similar to each other can lead to confusion, undermining the trademarks' benefit to consumers. Consequently, if the USPTO's examining attorney determines that a trademark submitted for registration is similar enough to a mark already in the federal registry that consumers are likely to be confused when trying to distinguish between brands, the office may issue a likelihood of confusion rejection. 

How IP Attorneys Handle Likelihood of Confusion Claims

Receiving a notice of refusal to an initial USPTO trademark application can be frustrating, but it is also a common experience shared by many business owners. While there are several possible grounds on which the application to register a trademark may be refused, "likelihood of confusion" heads the USPTO's list of possible grounds for refusal frequently cited by the agency's examining attorneys. 

The United States Patent and Trademark Office explains that a likelihood of confusion refusal may be issued when the mark submitted in the application is closely similar to another mark already registered or pending in the USPTO's database. To protect consumers, as well as the IP rights of the owner of the already registered or pending trademark, the USPTO will refuse to grant official registered trademark status to the newer mark. 

Trademark Search 

Given the opportunity, an IP attorney will usually try to ensure their client never receives a likelihood of confusion refusal in the first place. The USPTO's Trademark Search database is open to members of the public, including business owners preparing to file applications to register their own trademarks, but navigating the database efficiently is an acquired skill that benefits from the kind of practice an experienced trademark attorney will typically bring to the table. 

Responding to USPTO Office Actions 

The reality is that clients do not always seek legal assistance at the outset of their trademark application journey. An IP attorney often deals with clients who reach out for help because they have encountered difficulties with their initial trademark applications, often in the form of a USPTO office action

In the context of trademark registrations, an "office action" is a letter from the examining attorney the USPTO has assigned to the file. USPTO office actions may be issued about a variety of concerns that arise during the examination process. Initial refusal due to likelihood of confusion is a serious issue that will prevent successful trademark registration if not overcome. Two of the main strategies an IP attorney may use to overcome a likelihood of confusion rejection include:

  • Explaining how the client's trademark is distinct from the mark already registered. The explanation will often be based on a detailed comparative analysis of the two marks that aims to provide specific evidence of distinctiveness. 

  • Explaining differences in the goods and services labeled with the mark. Similarity between trademarks is more likely to result in a likelihood of confusion rejection when the goods or services identified with the marks belong to the same trademark classes, as defined by the USPTO, so an argument for deprioritizing the similarity between the marks themselves on the grounds of dissimilarity between the good or services covered may be effective in overcoming a refusal based on likelihood of confusion. 

In some instances, an IP attorney may consider an alternate path toward resolving the issue raised in the office action, such as negotiating with the owner of the prior mark for consent to the new registration or filing an amendment to the initial application limiting the covered goods and services. 

Work With an Experienced IP and Business Law Attorney

A likelihood of confusion rejection is one of the most common obstacles business owners may encounter in registering their trademarks. Overcoming this type of refusal can be difficult, but in some instances an IP attorney may be able to help business owners develop and implement an effective strategy for resolving concerns raised by the USPTO's examining attorney. To speak with an IP attorney prepared to integrate trademark registration with your comprehensive business strategy, call Business Law Group at (504) 446-6506 and book a consultation tailored to your business needs. 

About the Author

Amanda Butler Schley

Ranked as a Top Rated Business and Commercial Attorney, I have more than a decade of experience representing boutique hotels, family-owned businesses, privately owned restaurants, breweries, artists, executives and entrepreneurs.


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Business Law Group is a boutique business services law firm in New Orleans, Louisiana. Our focus is on understanding the legal pitfalls of your business and industry, as well as the secrets to maximizing your legal leverage at every opportunity and in every negotiation. We work selectively with clients that aren't ready for the overhead expense of an in-house general counsel, but understand the advantages of having a trusted legal advisor on their team. Amanda Butler has been ranked as a Louisiana SuperLawyer, New Orleans Top Lawyer, Best Lawyers, and in Leaders of Law.