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ARTICLE · 04 MARCH 2025

Adding A Feature To A Weak Trademark May Avoid A Likelihood Of Confusion

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If you select a trademark dominated by a word or number already in use or registered by several others for identical or related goods or services, your inclusion of some other distinctive feature may be sufficient...

United StatesIntellectual Property
William Borchard
William Borchard

If you select a trademark dominated by a word or number already in use or registered by several others for identical or related goods or services, your inclusion of some other distinctive feature may be sufficient to avoid a finding of likelihood of confusion for registration purposes.

The following is an example of such a mark:

1591808a.jpg

Metabeauty, Inc. adopted and applied to register the mark shown above, which prominently features the number 12, for skin care preparations (considered included in cosmetics) and retail services.

The Examining Attorney refused registration on the ground that there was a likelihood of confusion with the registered mark TWELVE COSMETICS (with COSMETICS disclaimed) in standard characters for cosmetics. (The number and word apparently are deemed legally equivalent.)

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