If a proposed trademark looks or sounds too similar to another mark, and it is in a related area of commerce, the USPTO can reject it as being confusingly similar.
You might think that if your proposed trademark is not identical to an existing mark, then the USPTO will approve it. This is not the case.
The law, in general, is all about human mental states and intentions. Trademark law is no exception. Here trademark law acts to protect us (as consumers) from accidentally purchasing the wrong thing. Trademark law also protects us (as sellers) from having unscrupulous competitors mislead our customers. For trademarks, a key issue is: would trademark “A” confuse the customers of trademark “B”?
For complicated “confusingly similar” cases, the courts can consider up to 13 distinct “Dupont factors” (from In re E. I. du Pont de Nemours & Co. 476 F.2d 1357, 177 USPQ 563, 1973). However, we can simplify. For most cases, the two biggest issues are Dupont factors 1 and 2:
Dupont factor 1: “The similarity or dissimilarity of the marks in their entireties (to a human, who may not be paying careful attention) as to appearance, sound, connotation and commercial impression.
A trademark examiner, judge or jury will generally considers all of the elements of the marks. If they find that the marks are similar, this is bad. There is some good news, however. If similar-looking trademarks are for very different products or services, then the chance of confusion is much less. So this can be a way to escape this problem.
Originally, if you were looking to purchase music, you wouldn’t be confused by computer products. Thus originally, trademarks for Apple records and Apple computers could coexist. (Later, Apple computer expanded into music, and they had to make a deal with Apple records. This is OK under Dupont factor 10.) This brings us to:
Dupont factor 2: “The similarity or dissimilarity of and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use.” (Here there are various trademark classes, and products and services in different trademark classes are usually considered to be dissimilar.)
USPTO trademark examiners will often just initially consider factors 1 and 2. However, if you get a “confusingly similar” rejection, it is time to start considering some other factors.
In defense, arguments might be made that the suppliers use different trade channels (factor 3); that the buyers are sophisticated buyers that are not easily confused (factor 4); or that multiple suppliers use a similar type of mark to sell similar goods or services (factor 6).
Another good option to consider is revisiting factor 2. See if you can narrow the scope of goods or services covered by your mark. If so, perhaps you can avoid overlapping with the goods and services covered by the other mark.