By Megan Wargacki:
Doissant. Cronut. Doughssant. These are variations on a croissant-donut hybrid. The Cronut is sold in New York, the Doughssant is sold in Ohio, and the Doissant is not yet on sale. Which name sticks in your mind the best? When you next visit Ohio, and you want to try this new pastry, will you be able to ask for the correct product?
Names matter.
If trademarks are “confusingly similar” or there is “likelihood of confusion,” then consumers might not be able to distinguish one service or product from another. Consumers might be confused about whether their favorite croissant-doughnut fusion is the Doissant or the Doughssant.
Likelihood of Confusion Standard
It is important to understand the “likelihood of confusion” standard because this is one of the tests that the U.S. Patent and Trademark Office (USPTO) will use in determining whether to approve an applicant’s trademark registration.
“Likelihood of confusion” is a statutory basis for refusing registration of a trademark or service mark when the mark is likely to conflict with a mark or marks already registered or pending registration before the USPTO.[1] After an application is filed, the USPTO examiner will search USPTO records to determine if a conflict exists between the mark in the application and a mark already registered or one that is pending registration with the USPTO. The test is, basically, if the relevant consuming public will be confused or mistaken about the source of a product or service sold under that mark, then a likelihood of confusion exists.
In keeping with the purpose of trademark law, which prevents consumer confusion, the USPTO examiner does not need proof of actual consumer confusion before refusing to register an applicant’s trademark or service mark. Instead, the examiner performs the analysis from the perspective of a hypothetical “reasonably prudent” consumer who would likely be confused by the applicant’s mark alongside registered and pending registrations of potentially competing products. This hypothetical consumer is not expected to make a detailed, side-by-side comparison of products or services or to have perfect recall. So, the examiner will compare the competing marks in their entireties, rather than dissecting the marks and comparing parts. However, the examiner may emphasize one or more features of the marks during the comparison, provided the examiner’s registration decision is based upon a full comparison of the marks.
The examiners may consider a wide variety of factors to determine likelihood of confusion,[2] though the top two factors below are usually the most relevant. (Each factor underlined and followed by a brief explanation):
1) The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. If two marks appear, sound or mean the same thing, consumers probably will be confused as to the source of the goods or services.
2) The similarity or dissimilarity and nature of the goods or services…described in an application or registration or in connection with which a prior mark is in use. When marks are used on similar or related goods or services they are more likely to confuse consumers as to the source of those goods or services.
3) The similarity or dissimilarity of established, likely-to-continue trade channels. Whether or not the goods or services are closely related, if the goods or services are marketed through the same stores or distribution channels, then consumers are more likely to be confused by the same or similar marks.
4) The conditions under which and buyers to whom sales are made, i.e. “impulse” vs. careful, sophisticated purchasing. The sophistication of the consumer matters, for example, a child is a more vulnerable, easily confused consumer than a typical business owner. The conditions of the transaction also matter, for example consumers are expected to be more discriminating when purchasing expensive products and services and so less confusion will be attributed to them.
5) The fame of the prior mark. Famous marks are given strong legal protection because they are more likely to be remembered and associated with their respective goods or services than weaker marks.
6) The number and nature of similar marks in use on similar goods. If there are already many similar marks used on similar goods or services, then consumers are used to being vigilant and another similar mark entering the market will not likely increase consumer confusion.
7) The nature and extent of any actual confusion. Actual confusion is not conclusive evidence of likelihood of confusion, but will be balanced the other factors.
8) The length of time during and the conditions under which there has been concurrent use without evidence of actual confusion. If there is evidence of long term concurrent use of similar marks for similar products without consumer confusion, the examiner is less likely to deny the applicant’s registration.
9) The variety of goods on which a mark is or is not used. When a mark is used to identify a single good or product, it becomes synonymous with that product (tissues are “Kleenex”) in contrast to when a mark is identified with a variety of goods or services.
10) The market interface between the applicant and the owner of a prior mark. When two marks are used to market to an overlapping consumer base, there is more likely to be consumer confusion where the marks are the same or similar.
11) The extent to which the applicant has a right to exclude others from use of its mark on its goods. The applicant may have a restrictive license with users of the competing mark(s) or a common law right to use the mark.
12) The extent of potential confusion. Depending on the extent of use of the mark, potential confusion may extend across the country and through all economic classes.
13) Any other established fact probative of the effect of use. If the competing mark owners have a “consent agreement,” where the prior registrant consents to the registration of an identical or similar mark by the applicant with detailed reasons why the parties believe there will be no consumer confusion, the examiner should take this into account with the other factors.
Real-world Application of Likelihood of Confusion Standard
Now we understand the “likelihood of confusion” standard, so let’s apply it to some real-world examples – Cronut, Doissant and Doughssant.
First, some background on the trademarks themselves. Chef Dominique Ansel of the Dominique Ansel Bakery in New York created a croissant-doughnut hybrid in 2013 called the Cronut – likely the most famous version. Chef Ansel filed to trademark “Cronut” on May 19, 2013, but has not yet received trademark registration. An application for “Doughssant” was filed on May 29, 2013 by Rosario Auddino. Auddino makes and sells the Doussants in his bakery and café in Hilliard, Ohio. Auddino claims to have invented the hybrid pastry twenty years ago.[3] Finally, applicant Lucky Dime, LLC of New York has not yet used the trademark “Doissant,” but filed for trademark registration on June 6, 2013.
Next, we compare Doughssant and Doissant using the first six DuPont Factors because the other factors do not apply (The factors are underlined again for consistency.):
1) The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. Doughssant and Doissant have very similar sound and meaning, though the appearance of the two words is dissimilar.
2) The similarity or dissimilarity and nature of the goods or services…described in an application or registration or in connection with which a prior mark is in use. Both marks apply to bakery goods.
3) The similarity or dissimilarity of established, likely-to-continue trade channels. The goods will likely be sold in different trade channels. Doughssant is sold in Ohio, but is marketed on-line. Doissant is not yet in the market, but as the owner is from New York, the products probably will be sold in New York.
4) The conditions under which and buyers to whom sales are made, i.e. “impulse” vs. careful, sophisticated purchasing. Bakery goods are often an “impulse” purchase and rarely require careful, sophisticated decision-making.
5) The fame of the prior mark. Auddino, the owner of Doughssant would have to prove his mark was famous before an examiner would give this factor any weight.
6) The number and nature of similar marks in use on similar goods. Considering the use of Cronut on the market, consumers may be more vigilant because they are accustomed to a variety of brands of croissant-doughnut hybrids, but there are only 3 brands, which isn’t that many.
The “likelihood of confusion” analysis suggests that consumers would likely be confused or mistaken about the source of the bakery products sold under either “Doughssant” or “Doissant” if both were registered. The examiner may deny registration to Lucky Dime, LLC for their trademark “Doissant,” because it was filed after the application for “Doughssant.
A similar analysis can be performed to compare “Cronut and “Doughssant.” The analysis will be very similar to the analysis shown above, except now the trademarks are much less similar in sound and appearance. This decreases the likelihood that consumers would confuse the source of the products, though the examiner may still find a likelihood of confusion based on the other factors.
Perform Trademark Search before Using Trademark
Because so much is left to the discretion of the USPTO examiner when applying for a trademark, a business should chose a trademark (or service mark) that will pass the “likelihood of confusion” test. A good way to ensure that proposed trademarks and service marks will not confuse consumers as to the source of products/services is to perform a trademark search.
A business can do their own trademark search or hire a trademark attorney to conduct a search for them. There are many articles and books describing how to conduct a thorough trademark search, so this process will not be described here.
Trademark Common Law Rights
Finally, registration of trademarks and service marks are not the only way to secure rights to these marks, rather rights arise simply from use of the trademark or service mark in connection with products or services. These rights are called common law trademark rights and they derive from state law.
However, these rights are not preferred. They extend only to the places where the trademark or service mark has been used in commerce; i.e. they are restricted to the geographic area where the mark was used. If another mark-user registers the same mark with the USPTO, this subsequent user would have rights across the nation, except for the limited geographic area where the prior mark-holder used the mark in commerce.
To secure common law rights in a mark, a business must show it was first to use a mark in a geographic area and that it continued to use the mark. Factors such as widespread distribution, public association with the mark, whether consumers associated the mark with the source of the products, whether the mark has become distinctive, and whether the mark owner has exercised quality control over the quality of products and has used the mark in a trademark sense all weigh on the business’ side if there is a dispute over rights to a mark.
Remember, these common law rights do not give the trademark (or service mark) owner the benefits of federal registration, such as the ability to recover profits, statutory damages, attorneys’ fees, triple damages for willful infringement, the right to use the ® to give notice of rights in the mark, and national priority. If a business would like trademark or service mark protection on the internet or across the nation, it is best to seek federal registration with the USPTO.