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Trademark Confusion: Why ‘Similar’ Isn’t Always What You Think

On Behalf of | Jan 31, 2025 | Firm News |

Trademark confusion occurs when a trademark is similar to another trademark and consumers may mistakenly believe the goods or services come from the same source. This is the most common reason for trademark registration refusal, and can substantially disrupt business growth.

Without doing your due diligence, you may experience:

  • Legal Expenses and Financial Losses
  • Business interruptions and delays
  • Damage to brand reputation
  • Forced rebranding and loss of brand equity

In this article, we’ll explain the legal standard for “likelihood of confusion” and how it applies to real-world business scenarios so that you know what to look for and avoid.

What Is Trademark Confusion?

Your trademark is how you distinguish your products or services from your competitors. If it’s too similar to that of another brand, consumers may mistake it as being that brand. It’s the most common reason why the U.S. Patent and Trademark Office (USPTO) rejects trademarks and could make all of your marketing, branding, and design amount to wasted time and money.

How Trademarks Can Be Similar

The “likelihood of confusion” extends to how comparable trademarks are in appearance, sound, meaning, or commercial impression. For example, if you want to open a clothing store called “Lee Vy’s,” you may be rejected because it sounds too similar to Levi’s. If your electronics store’s logo is a pear with a bite out of it, you may be encroaching on Apple’s iconic design.

However, this isn’t usually a problem if your goods and services aren’t related. After all, the owners of Dove soap and Dove ice cream bars coexist despite having identical trademarked names. If Lee Vy’s were the name of an electronics store, it likely wouldn’t conflict with Levi’s the clothing brand.

Goods and services are considered related if they are:

  • Identical, similar, or competitive
  • Used by the same buyer
  • Used or advertised together (e.g., toothbrushes and toothpaste)
  • Sold by the same dealer or manufacturer

Real-World Examples of Trademark Confusion

Example 1: Starbucks v Charbucks

In 2006, Starbucks sued “Charbucks,” a small coffee roaster in New Hampshire, stating that the name was too similar and could mislead customers. After an arduous court battle, Charbucks got to keep its name so long as its logo was clearly differentiated from Starbucks’ classic mermaid.

Example 2: Starbucks v Sardarbuksh Coffee & Co.

In 2017, Starbucks again served a rising Indian coffee company called “Sardarbuksh Coffee & Co.” arguing that its name was too similar to the coffee giant. This time, Starbucks won, and Sardarbuksh Coffee & Co. was forced to brand it as “Sardarji-Bakhsh Coffee & Co.”

Both Starbucks cases underscore why it’s essential to do thorough research before building your brand. If you don’t, you may spend your money on legal fees when you could be scaling your business.

Example 3: Academy Awards v. GoDaddy

This one’s a little different. In this legal dispute, the Academy Awards challenged GoDaddy, alleging that GoDaddy let people register domains related to its trademarks (e.g., 2011Oscars.com). The Academy believed these domains could mislead the public and that revenue could be channeled to domain owners by “domain parking.”

Despite the potential for brand confusion, the court ruled in GoDaddy’s favor, believing that the company didn’t act in bad faith. Instead, they were seen as a neutral service provider and not an active participant in trademark infringement, based on the Anticybersquatting Consumer Protection Act (ACPA).

Lessons Worth Learning from Trademark Confusion

Navigating trademark confusion is a critical part of protecting your brand’s identity and long-term success. Here are key lessons to help safeguard your trademarks, domains, and legal strategy from potential disputes.

  • Register Trademarks Early: Doing name research upfront can help avoid disputes and protect your brand’s future.
  • Claim Key Domain Names: Register important domains early to keep your online presence safe. Domain registrars may not be responsible for misuse, but others can still profit from consumer confusion.
  • Stay Legally Prepared: Even if you believe there’s a clear likelihood of confusion, the courts may not rule in your favor. You need a solid legal strategy covering trademarks, domains, and more.

Will Your Trademark Cause Confusion?

Choosing a trademark is about ensuring your brand stands out creatively and legally. Trademark confusion occurs when a business name or logo is too similar to one already used, especially if the businesses operate in related industries. Here’s how to reduce that risk and protect your brand effectively.

Start with a Thorough Search

Use the USPTO’s online database to check for similar trademarks already in use. While helpful, it’s not a guarantee that your trademark is secure. This search only covers registered trademarks and may miss unregistered ones that still have legal protection. A legal professional can perform a deeper search and explain potential risks based on your findings.

Evaluate the Strength of Your Brand Name

The more unique and distinctive your brand name, the better your chances of securing trademark protection. Creative, original, or even completely made-up names are easier to protect legally. Aim for something memorable that clearly distinguishes your business from competitors.

Think Beyond Your Industry

There could still be legal concerns if your business name is similar to one in a related or overlapping field. Think broadly about where your brand might intersect with others, especially as markets become more connected through online platforms.

Plan for Future Growth

Where do you see your business in five or ten years? If you expect to expand into new products, services, or regions, consider how your trademark will hold up in those areas. A name that works now might run into conflicts as your business grows.

What to Do If You Face a Trademark Dispute

Disputes can still occur even if you think you’ve covered your bases. Knowing how to respond can make all the difference. Here’s how you can protect your business:

  1. Understand the Claim
    Resist the urge to respond publicly or react emotionally before gathering all relevant facts. Start by carefully reviewing the complaint. Pay close attention to the specific allegations, dates, and supporting documents. The more you understand the details, the better prepared you’ll be to evaluate the seriousness of the claim.
  2. Consult a Trademark Attorney
    An attorney can explain the legal implications, walk you through your options, and help you respond thoughtfully. Acting early can reduce costs, prevent legal missteps, and minimize business disruptions.
  3. Explore Resolution Options
    Depending on the nature of the dispute, there may be different ways to resolve it. Negotiating directly with the other party or pursuing mediation can save time and expenses. If needed, your attorney can help you file a formal response with the USPTO to defend your rights.
  4. Consider Rebranding If Needed
    Many businesses have successfully turned a necessary change into a fresh opportunity to reach new audiences and strengthen their brand. An experienced legal team can guide you through this process while helping secure your business’s long-term success.

Avoid Trademark Confusion with Virgo Law

Whether you’re launching a startup or managing a growing company, Virgo Law crafts tailored legal strategies designed around your goals, conducts thorough trademark searches, manages precise filings, and resolves disputes—all to secure your brand and prevent legal conflicts before they arise.

Ready to build a stronger legal foundation for your business? Contact Virgo Law today and take the next step toward lasting success.