Rats. You spent so much time selecting your name, and you can’t use it. For one reason or another, you and your attorney have determined that you have to change your brand name: you received a cease-and-desist letter in the mail that contained some pretty valid claims; your application to federally register your trademark was rejected; or a trademark search revealed a third party that started using a similar name before you did. “But I love this name!” you proclaim. “I brainstormed, worked with a marketing company, surveyed my friends, Googled, and I purchased a domain name.” What’s a trademark owner to do?
Cheating the Trademark System: Is It Possible?
When in this situation, many brand owners want to turn to more “creative” alternatives to coming up with a brand new name. Unusual capitalization, spacing, and creative spelling are but a few of these alternatives. For example, the owner of the (imaginary) MUSIC CITY COFFEE brand, in a desperate moment, might consider the following alternatives:
- MUSIK CITY KOFFEE
- musicCITY COFFEE
Cheating the Trademark Office (or any other third party) in this manner is nearly impossible. But why?
Likelihood of Confusion & Similar Marks
“Likelihood of Confusion” is a concept that comes up in a few scenarios. One such scenario is when a trademark owner applies for federal registration, only to be rejected based on a “likelihood of confusion” with a preexisting mark. The phrase also comes up in the trademark infringement context. When a trademark owner that has priority over another trademark owner sends a cease-and-desist or similar demand letter (or files a lawsuit), the argument is that there is a “likelihood of confusion” between the two brands among consumers. Consumer confusion is precisely the thing that trademark law aims to prevent.
What does this mean? When comparing trademarks, the Trademark Office (or a third party) will not only look at the spelling of two marks for a likelihood of confusion, but will compare the marks’ appearance, sound, and connotation. In plain English, this means that if a mark is spelled differently, but sounds the same, a “likelihood of confusion” will be found regardless of creative spelling, spacing, or capitalization.
The Point: Cheating the trademark system is nearly impossible when it comes to using creative spelling, spacing, or capitalization in order to try to skirt around a likelihood of confusion!