Choosing a business name (wisely) is one of the most common questions that lands in our inbox at Paige Hulse Law, and is without a doubt the most common type of legal dispute we are asked to handle. What happens if a name you’ve chosen for your business, product, or slogan happens to look a little too similar to another company….even if you’ve never heard of them?
This question occurs every day- even for celebrities such as Taylor Swift. Recently, Taylor Swift recently came under fire in a trademark dispute over her album Evermore. On February 3, 2021 “Evermore Park”, a theme park in Utah, claimed that Taylor Swift’s album was creating “actual confusion” with visitors who weren’t understanding if a collaboration existed between Taylor Swift and the theme park.
Can you get sued for your business name? Ask yourself if you run the risk of “likelihood of confusion”.
The likelihood of misunderstanding or confusing trademarks occurs when two marks are very similar and the good or services to which the trademarks belong, are so alike that consumers could incorrectly believe they come from the same source. The #1 reason why trademark applications get rejected by the Unites States Patent and Trademark Office (USPTO) is when there is a “likelihood of confusion” between an application and a registered mark.
While there is no firm test for defining the likelihood of confusion, an experienced trademark attorney can help business owners determine whether or not they are safe to use a name, or whether that name runs too closely to another. Each name is evaluated on a case-by-case basis concerning the characteristics of a the proposed name (or logo) as well as the commercial relevance between two trademarks. Understanding what makes trademarks similar just might be the difference between trademarking intellectual property- or not being able to use your name (or logo) at all.
First, the USPTO will look for similarities and differences between the two trademarks. While the marks do not have to be identical, when the marks are similar enough so as to create confusion for consumers, those similarities may be enough to garner a finding of likelihood of confusion. So, what are example of when “similarities” turn into “confusion”?
There are multiple factors that the USPTO will examine, such as phonetic or visual similarities. For example, if two trademarks are spelled differently but sound identical or are similar enough sounding, the USPTO may reach a result indicating a likelihood of confusion and reject the application. The USPTO provides the example of “T. Markey” and “Tee Marquee”. While these fictitious potential trademarks are spelled differently, the similarities in pronunciation may trigger likelihood of confusion (particularly if they are used for the same type of business). In the same way, similar appearances in a trademarks visibility via use of font, size, or coloring may create enough of a similarity between different trademarks that results in a refusal of registration. Finally, commercial impression is significant to consider when establishing a trademark. A too-similar logo, design, or impression between two trademarks used in a commercial setting, can trigger likelihood of confusion. One example is the famous golden arches found at McDonalds. These golden arches were trademarked in 1982 and have become an integral part of the McDonalds 40.2-billion-dollar brand. Needless to say, the use of the golden arches in a commercial logo is likely to trigger at least a second look from the USPTO. Having a unique and distinguishable trademark can save your business time and money. More importantly, knowing what images, names, and designs have already been trademarked can help prevent having to rebrand- an expensive and potentially avoidable mistake!
Second, the USPTO will look at the relatedness between the goods and/or services between the trademarks in dispute. While design, look, and imagery of a trademark are the first step in discerning the likelihood of confusion results, the USPTO will find that confusion can only exist when two trademarks also share a commercial relationship. For example, if two businesses operate using a similar logo, but one business sells hats and the other is a bank- the USPTO is unlikely to find a likelihood of confusion result.
The issue is not whether the actual goods and/or services are likely to be confused but, rather, whether a likelihood of confusion would exist as to the source of the goods and/or services. See here.
In determining whether two businesses who share trademark similarities might create a likelihood of confusion, the USPTO does not consider whether a consumer might become confused between the two goods or services; rather, the USPTO will focus on whether there is a likelihood of confusion regarding where or from whom the goods or services were provided. For example- if two businesses have similar brands and both businesses sell shoes- the USPTO will identify the likelihood of confusion for consumers in where either product came from- which business do the shoes they wish to purchase- come from?
If the USPTO finds there is a likelihood of confusion, most likely the USPTO will refuse registration for the trademark and the business goes back to square one- rebranding.
So, back to Taylor Swift, and her pending lawsuit regarding Evermore. On February 3, 2021 Evermore Park, a theme park in Utah, claimed that Taylor Swift’s album was creating “actual confusion” with visitors who weren’t understanding if a collaboration existed between Taylor Swift and the theme park. Evermore Park also alleged that Taylor Swift’s clothing line was an infringement on the Evermore Park’s trademark. After receiving a cease-and-desist letter, Swift’s team stated no infringement had occurred and the images trademarked by Evermore Park’s were not used by Swift. Ignoring the cease-and-desist demand, Swift’s camp counter-sued claiming that the park was using three of Taylor Swift’s songs without the proper licenses. At the time of this writing, both parties have dropped their lawsuits and the matter was resolved without any further litigation.
Despite the seemingly easy resolution in this case, if a court had found Swift was in violation of trademark infringement, resolving this issue could have had severe consequences. Potentially, Swift might have lost the ability to trademark her merchandise and content related to the album by having her application for trademark registration rejected on a likelihood of confusion basis- if the similarities between the merchandise images were comparable enough and the sale of the merchandise could have potentially led a consumer to become confused as to where the product was being sold from. The magnitude which Swift sells albums and merchandise means she might have ended up with millions of dollars of lost revenue. More than that, a rally crafty attorney could have claimed that each item with the name “Evermore” sold constituted infringement (this would have been a huge reach, but serves as an example of how these cases can spiral quickly). However, it appears in this case that Swifts camp had done their due diligence and were ready when they received the cease-and-desist letter, a smart approach for any business.
If you haven’t run a legal due diligence search on your business name, you need to-now. The absolute last thing you want to have happen is building a brand reputation around a business name, investing in the branding, and truly building a name for yourself….only to get hit with a cease and desist letter, or worse, a lawsuit. Contact our team at firstname.lastname@example.org today to run a legal due diligence search (turnaround time approximately 2 weeks).