The Risk of Confusingly Similar Trademarks: How to Avoid a Costly Mistake

When it comes to trademark registration, one of the most common, and most avoidable, reasons for refusal are the likelihood of confusion with an existing mark. The U.S. Patent and Trademark Office (USPTO) is tasked with protecting both consumers and brand owners, which means it closely examines whether a newly-applied-for trademark is too similar to one that is already registered. For small business owners, startups, and even seasoned entrepreneurs, failing to recognize a confusingly similar trademark can lead to wasted fees, rebranding headaches, or even legal action. This article breaks down what confusing similarity means, how the USPTO evaluates it, and how to avoid the consequences of getting it wrong.

1. What is a Confusingly Similar Trademark? 

A confusingly similar trademark is one that resembles an existing mark closely enough to cause confusion among consumers. Even if the marks aren’t identical, they can still create the false impression that the products or services come from the same source when they are used for related goods or services. The USPTO scrutinizes this possibility as the foundation for refusing a trademark under Section 2(d) of the Lanham Act. 

 The USPTO typically evaluates similarity in three core ways: 

• Visual similarity – how the mark appears to the eye, including layout, lettering, or stylization 

  • i.e. “LUXE” in plain block letters vs. “Luxé” in a stylized cursive font: one mark uses a stylized font vs. standard character presentation but looks alike in overall impression 

• Phonetic similarity – how the marks sound when spoken, regardless of spelling 

  • i.e. “T. Markey” vs. “Tee Marquee” 

• Conceptual similarity – whether the marks convey the same idea, meaning, or overall impression 

  •  i.e. “Mountain Ice” and “Glacier Freeze” both evoke cold, natural imagery, which may create a similar commercial impression even though the words differ 

It is important to note that marks do not have to be identical. They just need to convey a similar commercial impression to consumers in the context of related goods or services. The bar is low enough that even modest resemblance, especially paired with overlapping categories, can trigger a “likelihood of confusion” finding. 

 The USPTO’s examining attorneys reference a detailed set of factors, often known as the DuPont factors, to weigh the risk of confusion. These include evaluative factors such as strength of the existing mark, the similarity of the marks, the relatedness of the goods or services, evidence of actual confusion, and consumer sophistication, among others. 

 2. How does the USPTO Evaluate Confusion?

Once a trademark application is filed, it is assigned to an examining attorney at the USPTO, whose job is to assess whether the proposed mark can be registered under the Lanham Act. One of the first things the examiner does is run a clearance check using the Trademark Search System (TSS). This is not a casual glance; it is a structured analysis aimed at flagging prior registrations that could pose a conflict. 

To determine whether confusion is likely, the examining attorney applies the DuPont factors, which is a multi-factor test established in the 1973 case In re E.I. DuPont DeNemours & Co., 476 F.2d 1357(CCPA 1973). While there are thirteen factors in total, not all are relevant in every case. The two that most often drive the analysis are: 

1. Whether the marks are similar in overall commercial impression (“the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression”) 

2. Whether the goods or services are related in the minds of consumers (“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”) 

However, the comparison involves more than just placing the marks side by side. The examining attorney also considers factors like: 

• Whether the marks are marketed through the same channels (“the similarity or dissimilarity of established, likely-to-continue trade channels”) 

• Whether consumers would be expected to exercise care when making a purchase (“the conditions under which and buyers to whom sales are made, i.e. “impulse” vs. careful, sophisticated purchasing”) 

• Whether the cited mark is strong or well-known, making it more likely to be confused with others (“the fame of the prior mark (sales, advertising, length of use)”) 

If confusion is likely, the USPTO will issue a nonfinal Office Action under Section 2(d), refusing registration. The applicant then has three months to respond—either with legal arguments, evidence, or by amending the application. In some cases, a coexistence agreement with the cited registrant may help, but USPTO is not required to honor private agreements if confusion still seems likely. 

What matters most is that the evaluation happens from the perspective of the “average consumer”, not a lawyer or brand owner. This perspective often turns on overall impressions, not technical differences between the marks. Even subtle similarities can be fatal if the goods or services overlap.  

3. Examples of Rejections Due to Confusion

Many trademark applicants assume that small differences in spelling or phrasing are enough to distinguish their brand, but this assumption often leads to costly rejections. The USPTO frequently refuses marks under Section 2(d) of the Lanham Act when they resemble existing registrations in sight, sound, or meaning. 

Below are several illustrative examples showing how the standard is applied in practice: 

• In re Caymus Vineyards, in which the applicant sought to register the mark “TABLEAU” for wine. The USPTO refused the application under Section 2(d), citing a prior registration for “TABLEAU” used in connection with restaurant and bar services. Although the goods and services were not identical, the Trademark Trial and Appeal Board (TTAB) held that wine and bar services are commercially related and often marketed through overlapping channels. Since the marks were identical in appearance and pronunciation, and the goods were considered complementary in consumer perception, the Board found a likelihood of confusion and affirmed the refusal. 

• In re I.AM Symbolic, LLC, in which the applicant, musician will.i.am’s company, sought to register the mark “I AM” for a wide range of goods and services including cosmetics, sunglasses, and jewelry. The USPTO refused registration under Section 2(d), citing multiple preexisting registrations for the identical “I AM” mark covering similar classes of goods. The applicant attempted to distinguish its mark by stating the goods were “associated with William Adams, professionally knowns as will.i.am,” but the examining attorney and the TTAB rejected that distinction. The federal circuit affirmed, emphasizing that the marks were legally identical and the goods overlapped in both type and trade channels. The court concluded that consumers encountering the goods were likely to believe they came from the same source and accordingly upheld the refusal.  

• In re Andre Maurice, in which the applicant sought to register the mark “FEYONCE” for apparel. The USPTO refused the application under Section 2(d), citing prior registrations for “BEYONCE” and “YONCE”, both used in connection with clothing. The TTAB affirmed the refusal, finding that the marks were visually and phonetically similar and conveyed a similar overall impression, despite minor spelling differences. The goods were either identical or closely related, and the trade channels overlapped, leading the Board to conclude that consumers encountering the mark would likely assume a connection with the prior registrant. As a result, the refusal was upheld.  

• In Re Dixie Restaurants, Inc., in which the applicant sought to register the mark “THE DELTA CAFÉ” for restaurant services. The USPTO refused the application under Section 2(d) citing the prior registration, “DELTA” for hotel, motel and restaurant services. The examining attorney and TTAB noted that the word “CAFÉ” was a generic, descriptive element which did not add distinctiveness, and that the dominant portion of the mark was identical to the existing registration.  

These examples reflect the USPTO’s consistent emphasis on preventing consumer confusion in the marketplace. In each case, the refusal was not limited to identical duplication, but arose from similarities in wording, overall impression, and the commercial context in which the marks were used. For applicants, the takeaway is clear: even small differences may not be enough to avoid a refusal if the goods were related and the marks convey a similar source to the average consumer.    

4. What Happens if You Apply Anyway? 

Submitting an application for a trademark that closely resembles an existing registration often sets off a chain of avoidable problems.

If the USPTO determines that there is a likelihood of confusion with a registered mark, the examining attorney will issue an office action citing a refusal under Section 2(d). As discussed earlier, at that point, the applicant is required to respond with legal arguments, amendments, or evidence showing why confusion is unlikely. 

Many applicants are not prepared for this back-and-forth. Even the best written argument isn’t guaranteed to overcome a 2(d) refusal, and if the USPTO is unwilling to budge on their assessment, the application will ultimately go abandoned without a refund of the filing fees that were initially paid to the USPTO.

Even if a conflicting registration is not identified during initial review, the application is still not in the clear. Once it is published for opposition, any third party who believes the mark infringes on theirs can file a formal opposition with the TTAB. These proceedings are adversarial, time-consuming, and may require legal representation. For many small businesses, they bring unexpected legal costs and pressure to settle or rebrand.  

In some cases, the situation escalates beyond the USPTO entirely. A senior trademark holder may initiate a trademark infringement lawsuit in federal court, particularly if they believe the use of the mark is already causing marketplace confusion. This can lead to injunctive relief, monetary damages, or forced rebranding. These outcomes are expensive and disruptive, regardless of intent.  Ultimately, the consequences depend on how far the conflict goes. However, in every scenario, the risk stems from the same source: filing a mark without fully assessing whether it is too close to one that already exists.  

5. Tips to Avoid This Mistake 

The best way to handle a confusingly similar trademark issue is to avoid it entirely. While no trademark filing is risk-free, most refusals under Section 2(d) can be prevented with the right due diligence and strategic planning.  

• Working with a trademark attorney during the application stage can make a significant difference. Trademark attorneys are trained to conduct thorough searches of existing marks to identify hidden risks, help tailor the application to reduce exposure, and advise whether a proposed mark is worth pursuing. While filings done on your own may be appealing from a cost perspective, a rejected application or legal dispute down the line is often far more expensive. 

• If you choose to do this on your own, start with a comprehensive clearance search, not just a keyword check on the USPTO’s TSS database. A strong search should account for spelling variations, plural forms, abbreviations, and other marks that might convey the same impression. 

• Next, it is important to understand the market context. The more closely your goods or services overlap with another registrant’s, the less room you have for similarity in the name itself. A unique mark won’t help if it’s applied to products in a saturated or brand-sensitive space like cosmetics, apparel, or digital services. 

• Moreover, another effective way to reduce risk is by thinking ahead. If you are planning to scale your business or expand into other product categories, choose a mark with room to grow. A narrowly tailored name that only works for a specific niche could limit future brand development, or worse: it could create conflict with trademarks in adjacent categories once the business expands. 

• Finally, be prepared to pivot. If a search reveals that a preferred name carries a high risk of confusion, it may be more cost-effective to rebrand before investing in packaging, domain names, and marketing. It is far easier to change direction early than after a refusal, opposition, or demand letter arrives. 

Choosing a trademark is more than a creative exercise; it is a legal decision. A little caution upfront can save substantial time, money, and stress later on. 

 6. What to Do If You Have Already Filed and It Is Refused 

If you have already filed a trademark application and received a refusal based on the likelihood of confusion, you are not alone, nor are you out of options. The USPTO gives applicants the opportunity to respond to refusals, and in some cases, a well-supported argument can overcome the rejection.  

Start by reviewing the Office Action closely. The examining attorney will explain which registered mark(s) are cited and why they believe confusion is likely. This is not a final decision; it is an opportunity to submit a legal response within three months.  

Depending on the facts, there are a few common strategies:  

• Argue that the marks are distinguishable: If the marks differ enough in appearance, sound, or meaning, you may be able to show that confusion is unlikely, especially if the goods or services are not directly competitive. 

• Limit or clarify your goods/services: Narrowing the scope of your application can reduce the overlap with the cited mark and eliminate the basis for confusion. 

• Submit evidence of coexistence: If both marks have coexisted in the market for years without confusion, that history may support registration. 

• Negotiate a consent agreement: In some cases, the owner of the cited mark may agree in writing that they don’t object to your registration. While not always accepted by the USPTO, a consent agreement can carry persuasive weight. 

That said, not every refusal can be overcome, and it is important to assess whether the mark is worth defending. If the cited mark is particularly strong or the overlap is significant, the better path may be to rebrand proactively. While this is not ideal, rebranding early can help you secure stronger rights in a new name and avoid future legal disputes. 

In either case, it is best to consult a trademark attorney before deciding how to proceed. A professional can help evaluate your options, draft a compelling response, or advise whether shifting to a new mark is the more strategic move. 

Receiving a refusal is not the end of the road, but it is a sign that your trademark needs closer legal attention. With the right approach, you can either overcome the issue or move forward with a stronger, more registrable brand.