One of the key requirements for a successful trademark registration is to avoid or resolve any potential similarities between already existing trademarks and the applicant's trademark. The reason for the similarity search stems from the very purpose behind trademarks, which is to protect distinctive brands and avoid consumer confusion.
How is trademark similarity determined?
What makes two trademarks similar or dissimilar? Intellectual property offices (IPOs) assess similarity by looking at various independent factors, each being capable of proving or disproving similarity, including meaning, appearance and phonetic resemblance. Relatedness of goods/services plays a special role here, because even if two trademarks may seem confusingly similar, a likelihood of confusion will exist only if the goods/services are related. Conversely, if the goods/services are identical, then less of a similarity is required between the two trademarks to find a likelihood of confusion.
The approach to addressing similarity varies a lot between jurisdictions. USPTO is the strictest, refusing the registration altogether if it concludes that a conflict exists between the applicant’s mark and a registered mark. Other IPOs (e.g. in the UK and EU) merely inform holders of existing trademarks about the potential conflict. The owners can then come forward during a specific window in the process, during which the new trademark is published for opposition.
How do I know if there are any trademarks similar to mine?
Since the concept of trademark similarity is very broad, it is virtually impossible for the applicant to know whether there are any already registered trademarks which sound similar, look similar or just give out a similar impression. Submitting a new application then becomes a lottery with possibly damming outcomes. Particularly in the US, the applicant may lose all of the fees paid to the USPTO. Even in jurisdictions with less strict rules, it may still lead to an opposition that needs to be resolved, costing applicants additional time and resources.
Before submitting a new application, it is strongly recommended to obtain a comprehensive assessment including a similarity screening, which will give you an overview of all potential conflicts with already existing trademarks. In Trama, we offer such screening with results in 24 hours free of charge and we provide customers with personalized risk profiles that help them navigate the registration process.
I see a potentially similar trademark in my assessment, shall I be worried about the opposition?
It is worth pointing out that not all businesses with similarity claims come forward during the opposition stage, as they simply may think there is no harm in the two brands coexisting in the market. Bear in mind that in some jurisdictions, the burden of opposition falls on the trademark holder. On average, oppositions are raised in 5% of the new applications.
However, if you do receive an opposition, there are multiple ways of addressing it. You can find more information in our article What happens if someone opposes my trademark application?