By filing a trademark, you are asserting that to your knowledge, there’s no prior use of the trademark you intend to file. Where a diligent search has not been conducted, a claim for false misrepresentation may be viable.

Pursuant to 15 U.S.C. §1052, no trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it . . . (d) Consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive. Thus, the Likelihood of Confusion Test offers a litmus by which the Examining Attorney measures all applications when determining whether an applicant’s mark will cause confusion, mistake, or deceive with regard to another an existing, registered Trademark. These are some of the factors taken in to consideration:

  • Strength of earlier user’s trademark
  • Similarity of the trademarks
  • Similarity of the products or services offered
  • Whether consumer is likely to be confused between the earlier use of the trademark and the latter use of the
  • trademark
  • Location of Users
  • Potential of earlier user entering in to latter user’s marketplace
  • Latter user’s intent (Bad faith= almost an immediate dismissal of application)
  • Evidence of actual confusion (reasonable person standard)
  • Sophistication of likeliest consumers

Quality of the latter user’s products or services compared to earlier user’s products or services, such that a good or service of significantly lesser quality will be hostile to the business of the better quality good or service.

*Note: that the claim or defense of Abandonment of a prior use of Trademark must be proved by Clear and Convincing evidence.

Failure of the Likelihood of Confusion Factors

If there is a likelihood of confusion, it creates a claim of infringement against the latter user, and potentially a claim in tort for false misrepresentation, as explained above.