The "Spelling Hack" Myth & The Trademark Traffic Jam: A Guide to Likelihood of Confusion

The “Spelling Hack” Myth & The Trademark Traffic Jam: A Guide to Likelihood of Confusion

Attorney Advertising

You have the perfect name for your new brand. Before launching, you do the smart thing: you go to the USPTO database and type it into the search bar. Here is an instruction video and use the below link to search for registered trademarks: USPTO’s TESS: https://www.uspto.gov/trademarks/search. Also, we suggest you conduct Google, Bing, Yahoo, Amazon, eBay, Yelp, and any other industry-specific searches on your own to assist in narrowing down a potential candidate before hiring us to conduct a search. Please view this

You see a company with a similar name, but they spell theirs with a “K” instead of a “C.” Or maybe their name is two separate words, and you want to make yours one combined word. Or perhaps they are just “Acme,” and you want to be “The Acme” or “Smith & Acme.”

You think to yourself: “It’s spelled differently and looks different. I’m in the clear!”

Unfortunately, you are likely walking right into a trap. The USPTO does not just look for exact, letter-for-letter matches. They evaluate trademark applications based on a legal standard called “Likelihood of Confusion.” Here is what that actually means, why DIY searches often fail, and why the current e-commerce boom is making it harder than ever to secure a clean trademark.

The Standard: Potential Confusion, Not Actual Confusion

The trademark office isn’t trying to determine if a customer has actually been confused by your name. The standard is whether there is a potential for the average consumer to mistakenly believe that your products or services come from the same source as the other company.

When assessing this, the USPTO relies on a famous legal framework known as the DuPont Factors.

There are 13 factors in total (listed at the bottom of this post), but in the vast majority of cases, the entire battle comes down to just the first two:

The similarity of the marks (How they look, sound, and feel).
The similarity of the goods, services, or market (What you are actually selling).

The Sliding Scale of Confusion

The USPTO uses a “sliding scale” when weighing these top two factors.

If the marks are identical, the goods and services do not need to be exact competitors for a rejection to happen. (For example, if you try to register “Delta” for plumbing fixtures, you might get blocked by “Delta” the airline, even though those are entirely different industries).
If the goods and services are identical, the marks do not need to be identical to trigger a rejection. They just need to be vaguely similar.

The “Spelling Hack” Myth and Dominant Words

This is where most founders make a fatal mistake. You cannot circumvent a Likelihood of Confusion refusal just by tweaking the spelling, removing a space, or adding a generic filler word.

The USPTO evaluates the “Dominant Word” and the overall commercial impression.

When a consumer reads your brand name, what sticks in their head? If a prior registration exists for the word “ACME,” you will likely be rejected if you try to register:

AKME (Sounds identical)
The Acme (Adding “The” doesn’t change the dominant word)
Acme Coffee (“Coffee” is generic and does not add much from a trademark perspective)
Smith & Acme (The dominant word is still present)

If the dominant impression is the same, changing the window dressing won’t save your application.

The Trap of Arguing “No Confusion”

Usually, an Examining Attorney will issue a rejection based solely on the marks and the products (the first two factors). If that happens, your attorney can use the other 11 DuPont factors to argue why there wouldn’t be confusion (e.g., “our customers are highly sophisticated,” or “we sell in entirely different trade channels”).

But here is the harsh business reality: Everything you say can and will be used against you, so If you have to argue that there is no likelihood of confusion between your trademark and a similar registration, you are essentially weakening your trademark. If you have to write legal and factual arguments explaining why your name is just different enough from a competitor’s, your brand lacks strong distinctiveness. Even if you win the argument and get the registration, you will have an incredibly hard time enforcing that weak mark against future copycats.

The “Trademark Traffic” Problem: Why Finding a Name is Harder Than Ever

If you feel like every good name is already taken, you aren’t imagining things. We are currently experiencing unprecedented “Trademark Traffic.”

It is incredibly difficult to find clear marks right now due to a massive surge in USPTO registrations. A huge driver of this traffic is overseas filers and e-commerce sellers. Platforms like Amazon provide massive benefits (like Amazon Brand Registry) to sellers who have a registered trademark.

As a result, sellers are flooding the USPTO, filing trademarks for all sorts of broad, completely unrelated items just to get their Brand Registry perks. This clutters the database and creates a minefield for new businesses. It makes it substantially easier for an Examining Attorney to find a prior registration and cite it against you.

The Bottom Line

Before you fall in love with a brand name, invest in a comprehensive clearance search by a professional who understands the Likelihood of Confusion standard. Don’t rely on spelling hacks, and don’t try to navigate the trademark traffic jam alone.

Appendix: The 13 DuPont Factors

(For those who want the full legal list, here are the 13 factors the USPTO considers when determining Likelihood of Confusion, stemming from the landmark case In re E.I. du Pont de Nemours & Co.)

The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression.
The similarity or dissimilarity and nature of the goods or services.
The similarity or dissimilarity of established, likely-to-continue trade channels.
The conditions under which and buyers to whom sales are made (i.e., “impulse” vs. careful, sophisticated purchasing).
The fame of the prior mark (sales, advertising, length of use).
The number and nature of similar marks in use on similar goods.
The nature and extent of any actual confusion.
The length of time during and conditions under which there has been concurrent use without evidence of actual confusion.
The variety of goods on which a mark is or is not used.
The market interface between the applicant and the owner of a prior mark.
The extent to which the applicant has a right to exclude others from use of its mark on its goods.
The extent of potential confusion.
Any other established fact probative of the effect of use.

DISCLAIMER: The information contained in this article is for informational purposes only and is not legal advice or a substitute for obtaining legal advice from an attorney.

If you’re looking for a definitive answer for your new brand, call us at (888) 666-0062 or click here to schedule your Initial Discovery and Strategy Session online.

DISCLAIMER: The information contained in this article is for informational purposes only and is not legal advice or a substitute for obtaining legal advice from an attorney.