John Welch – author of The TTABlog – reviewed the Trademark Trial and Appeal Board decisions in 2018 that involved a likelihood of confusion refusal. He counted 219 decisions that involved a likelihood of confusion refusal. Two hundred of the 219 likelihood of confusion refusals were affirmed by the Trademark Trial and Appeal Board. Only 19 were reversed for an affirmance rate of 91.3%. He also reported that the 2018 affirmance percentage was slightly higher than the 2017 affirmance percentage.
It goes without saying that these are really bad odds for any trademark applicant contemplating an appeal of a likelihood of confusion refusal. However, it could be that the cases reaching the Trademark Trial and Appeal Board could and should have been prosecuted differently by the trademark applicant.
For example, in 2018, several trademark applicants attempted to win their argument that no likelihood of confusion existed by offering a meager number of third-party marks sharing an identical or similar term. Not being able to establish the conceptual weakness of a cited mark materially undermines that argument that the marks at issue are sufficiently dissimilar. Likewise, several trademark applicants attempted to show the goods or services at issue were unrelated without first narrowing the goods or services descriptions at issue. This is a losing argument 100% of the time unless the goods or services at issue are technical in nature or the goods or services description is vague.
What is important about the 91.3% affirmance rate is that there are things that can be done at the front end to avoid a likelihood of confusion refusal in the first place. This starts with conducting a preliminary trademark search that focuses on what is important: (1) mark similarity; (2) relatedness of the goods; and (3) dilution. A proper assessment of the search results will then lead to the preparation of a trademark application that has a good chance of avoiding a likelihood of confusion refusal.