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After confusingly-similar refusal, can I still use my trademark?

If a trademark is refused registration due to a similar mark already registered, can the mark still be used without registration?

~ Spokane, Washington

Sometimes, initial refusals for likelihood of confusion can be or actually are overcome, and the trademark application is eventually allowed. You might overcome the refusal by changing the Examiner's mind, appealing the Examiner's refusal, or appealing the decision of the US Trademark Office to US Federal Court.

You can read more about responding to a trademark refusal. If the refusal is overcome, this means that the examiner (or court) agrees, at least with the evidence of record at the US Trademark Office, that it is unlikely that there is a likelihood of confusion.

Next, the kind of arguments and evidence that may be considered by the US Trademark Office is limited, in part, because trademark registration is ex parte, that means, just one party. So, there is no party arguing against trademark refusal. So, certain kinds of evidence can not be considered by the US Trademark Office. If any of these other factors would eliminate or reduce the likelihood of confusion, then, it may be possible to continue to use the trademark that was refused registration.

The US Trademark Office will ususally consider the following factors when considering a trademark application:

  • The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.
  • The relatedness of the goods or services as described in an application or registration or in connection with which a prior mark is in use.
  • The similarity or dissimilarity of established, likely-to-continue trade channels.
  • The conditions under which and buyers to whom sales are made, i.e. "impulse" vs. careful, sophisticated purchasing.
  • The number and nature of similar marks in use on similar goods.
  • A valid consent agreement between the applicant and the owner of the previously registered mark.

The following factors are not usually considerd by the US Trademark Office, but, they would be considered in a court action for trademark infringment.

  • The fame of the prior mark.
  • The nature and extent of any actual confusion.
  • The length of time during and the conditions under which there has been concurrent use without evidence of actual confusion.
  • The variety of goods on which a mark is or is not used.
  • The market interface between the applicant and the owner of a prior mark.
  • The extent to which applicant has a right to exclude others from use of its mark on its goods.
  • Any other established fact probative of the effect of use.

In general, if you plan to continue using the trademark after there has been a final, formal refusal due to a likelihood of confusion, consider obtaining a formal opinion from a qualified trademark attorney that says the marks are not confusingly similiar. At a minimum, that formal opinion would serve as some evidence that you did not willfully intend to infringe the previously registered trademark, because, you were acting under advice of counsel.

Trademark Office Action: How to respond

Trademark First Use Date: When is it?