【美国商标注册常见问题】什么样算 “近似 / 易混淆”？字形、读音、含义还是商品关联性？-柏斯特(深圳)国际知识产权服务有限公司

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What constitutes "similarity/confusion" in US trademark registration? Is it the shape, pronunciation, meaning, or product correlation?

Time: 2025-10-28 Click count: 556

Preface:

One of the most common questions we encounter when communicating with clients about trademark registration in the United States is, what kind of trademark is considered a "similar/easily confused" trademark? What the US Patent and Trademark Office is examining is their Is it the shape, pronunciation, meaning, or product correlation? How can we avoid such situations when designing and naming American trademarks?

In today's article, we will use specific cases to answer your questions:

In US trademark law, a comprehensive evaluation is required to determine whether a trademark constitutes "Likelihood of Confusion" The trademark itself and Product/Service Relevance Two major dimensions. According to the Langham Act (15 USC § 1052 (d)) and case law (such as In re E.I. du Pont de Nemours & Co. ）USPTO and courts adopt The DuPont factor Perform multidimensional analysis using DuPont Factors. The following are specific judgment criteria and practical suggestions:

1、 The similarity of the trademark itself: shape, pronunciation, meaning

1. Visual Similarity of Character Shapes

Core standards:Is it possible for ordinary consumers to confuse under normal attention.

Example: "LUXE" vs. "LUME" (with similar character heights, easily confused)

'MICROSOFT' vs. 'MICROSOFTZ' (The difference in tail letters is not sufficient to eliminate confusion)

2. Phonetic Similarity

Pronunciation is the same or similar:Even if the spelling is different, it may still cause confusion.

Example: "KNIGHT" vs. "NITE" (pronounced the same, causing confusion when product categories overlap)

APPLE "vs." APL "(pronounced differently, may not be confused).

3. Conceptual Similarity

Translation or implied meaning is the same:Trademarks in different languages may be considered similar if they have the same meaning.

Example: Chinese "flying bird" vs. English "FLYING BIRD" (with the same meaning, causing confusion when related to the product)

BLACK HORSE "vs." DARK STALLION "(similar concept, but needs to be judged in conjunction with the product).

2、 Relevance of Goods/Services

1. Direct competitive relationship

Similar products/services, such as "NIKE" sneakers vs. "NIKEY" sneakers, may be rejected even if there are spelling differences.

2. Complementary or related goods

Example: Clothing (Class 25) is highly correlated with shoes (Class 25)

Mobile phones (Class 9) and phone cases (Class 9) complement each other.

3. Sales channels overlap with consumer groups

If two products are sold through e-commerce platforms and the target users are the same, even if the product categories are different, they may still be considered confused (such as In re St. Helena Hospital The case.

3、 Example of the Weight of the "DuPont Factor" in Comprehensive Judgment

4、 Confusion situations that are easily overlooked in practice

1. Confusion of non-traditional trademarks

Color, sound, and three-dimensional trademarks: such as Tiffany Blue (Pantone 1837) and similar color codes are used for jewelry products.

2. Cross class' reverse confusion '

Small brands may be rejected due to cross class expansion of large brands (such as Beam v. Tequila Cuervo In the case, "HORNBITO" was found to be confused with "HORNBIL".

3. Translation risks of non English trademarks

Chinese pinyin or literal translation may trigger trademark examination for similar trademarks in English (such as "XIAOMI" to avoid confusion with the pronunciation of "SHOWME").

5、 Risk control strategy

1. Trademark search stage ：

Using USPTO TESS database Combining professional tools such as Corssearch All factor search (Character shape, pronunciation, meaning, and product correlation).

focus on The first 4 letters/syllables Similar trademarks (USPTO examination practice).

2. Apply for strategy adjustment ：

If similar trademarks are found, they can be considered

Modify trademark design (such as adding graphic elements)

Limit the scope of product description (avoid conflicting categories)

submit Coexistence Protocol (Coexistence Agreement, which requires proof of no confusion in the actual market).

3. Dispute resolution ：

If received Office Action (review comments) , need to be from Product differentiation or Consumer Attention Angle defense (such as providing market research reports).

6、 Classic Case Reference

1 In re Shell Oil Co.：

The "SHELL" text trademark vs. the "SHELL" graphic trademark was ultimately approved for registration due to their lack of association with the goods (oil and catering).

2 Brookfield Communications v. West Coast Entertainment：

“MOVIEBUFF” vs. “MOVIEBUFFS”， Due to the high correlation between the product (film and television database and video rental), it has been identified as confusing.

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