The question of what constitutes trademark confusion often comes up, and in the bid of avoiding trademark confusion, applicants often ask if adding one letter or misspelling their trademark could prevent similarity with another brand.
In many countries (including Canada and the US), there is a conventional test of trademark confusion. The probability of confusion is analyzed by sampling a regular customer with an average IQ and normal (imperfect) memory, who first observes one mark in relationship with the products, and afterwards at a later time, when he/she sees the second mark, is confused into believing that the origin of the products is the same.
The reason for this test is to check whether the marks have visual or oral similarities, so incorrectly spelling a trademark is not of much help if it has resemblances to another trademark (provided goods are similar).
To cite an instance; you go to a store in search of tennis rackets. You discover incredible tennis rackets that are called TENYRACK. It’s unimportant whether you purchase the rackets or not. You return to the same store some days later, and you come across some tennis rackets that are called TENIRAK. The sight of these tennis rackets strikes a recollection of the tennis rackets you had seen days earlier in the same store, and you decide to purchase these rackets with the belief that they are produced by the same company that created the previous tennis rackets. That is an apparent case of confusing the source of the product for another. At the point when the Trademark Office evaluates your trademark for the probability of confusion, the aim is to check whether an ordinary purchaser with flawed memory is probably going to be confused.
It is important to note that if products are not in any way related, then the likelihood of confusion should not exist in the first place.
If you went to a similar store and saw vehicle oil available to be purchased by the name TENIRAK, it’s impossible you would imagine that a similar organization that makes tennis rackets additionally make vehicle oil, so it’s improbable that you would be confused about the origin of the product.
It may not be sufficient to separate differentiate from a similar trademark if you include word fillers, similar to “my,” “best,” “items,” “brands,” “organization,” “arrangements.”
Adding prefixes or word filters like “best,” “brands,” “solutions,” “best,” may not suffice to differentiate between similar trademarks.
There are some guidelines on how to make your trademark stronger. They are as below-Some guidelines on how to make a trademark stronger are suggested underneath:
- If there is a trademark for NOSAIC for stationary, and you if you want to file for NOSSAIC for calendars, the addition of the letter “S” to the trademark will not strengthen your trademark even if you add any of the filler words (Like “best,” “products”). The best option is to change the existing name or try to think up another name. A better idea is to use something like INFINITY NOSAIC, which will have higher possibilities as another unique word is added.
- Some descriptive words will not make enough in differentiating trademarks. If you are into the cosmetics business, for example, words like “wellness,” “health,” “beauty” will not do much help.
So, if you want to trademark SNINEY GLITTER LIPS for lipstick and there is a trademark GLITTERING SHINEY LIPS for lipstick glitter, changing your trademark to SNINEY GLITTER LIPS LIPSTICK or SNINEY GLITTER WELLNESS will not make your trademark stronger. Instead, try to find a different name or modify the existing name by replacing one word with another one, for example, SHINEY DELICIOUS LIPS or better yet, substituting one word with a created word, SNINEY FANTABULOUS LIPS.
- If you are into the sales of clothes or exercise equipment, words like: “clothing,” “apparel,” “gear,” “sports equipment,” in your trademark are considered fillers.
For instance, if you need to trademark COOLER YOU for shirts and there is a trademark YOU ARE COOL for jeans, at that point adding CLOTHING to your trademark (COOLER YOU CLOTHING) won’t make your trademark more registrable. Instead, you should endeavour to come up with another name or add another unique word to your trademark.
- If you are into sales of kitchen apparatuses/utensils, words that describe those items are weak and will carry little or no weight than different invented words. For instance, these words are descriptive and won’t make your trademark more registrable: “home,” “kitchen,” “utensils,” “arrangements.”
If you sell pizza cutters and call them ZOOM CUTTERS, attempting to change the name to ZOOM PIZZA CUTTERS or ZOOM CUTTERS FOR KITCHEN to separate from ZOOM CUTTERS for pizza slicers won’t do any help. Be that as it may, changing to KABOOM CUTTERS may work fine and dandy.
- On a final note, in the event that you need to sell garden pots called GROW AND EAT and there is a trademark for greenhouses EAT AND GROW, it won’t help if you incorrectly spell your trademark or make slight changes as GROU N EAT but it may work if you change your trademark to EAT YOUR GROW (so that the meaning is broken).What to do if you are stuck and can’t think of any unusual words to include? Utilize Greek folklore or foreign or ancient languages.Setting off to our precedent above, ZOOM CUTTERS may end up registrable if you transform it into SPHYNX ZOOM CUTTERS.
One other thing to bear in mind is that using a similar trademark makes you stand the risk of getting a cease letter. If you notice that your trademark is too similar to an existing one, pick another one. Otherwise, you could get a cease letter saying that you have infringed on someone else’s trademark.
When evaluating confusion, there are many other factors that one needs to consider. For instance; are there any other similar trademarks that already exist on the Trademark Register? If so, how many others live on the Trademark register? How long have you been using your trademark? Chances are higher than your trademark will register the longer you have used it.
We do give recommendations on how to make your name more registrable when we complete a free trademark search for you, so if your name ends up being unregistrable, we will work with you to find a registrable name or change the current name to increase your odds of successfully registering your trademark.