Trademark Likelihood of Confusion and the Crowded Field Doctrine

The more crowded the relevant trademark field is, the less protection those trademarks receive. Learn more about the crowded trademark field doctrine today!

 

When arguing around a Section 2(d) likelihood of confusion Office Action issued by an Examining Attorney when applying for a trademark registration or defending a trademark infringement lawsuit, many trademark owners will rely on the theory that there is a “crowded trademark field” and there should be only limited protection given to previous trademarks.

 

Asserting the “crowded field doctrine” in defense of a trademark lawsuit may also come back to haunt the trademark owner because they are admitting their trademark exist in a crowded field and should not receive broad protection given to distinctive trademarks.

 

When discussing this topic, it is important to first define and explain what a crowded trademark field is before digging into the implications of how the crowded field doctrine affects the likelihood of confusion analysis.

 

What is a “Crowded Trademark Field”?

 

Crowded trademark fields are areas of a particular industry where many companies and competitors adopt similar names. For example, nearly every town has a House of Pizza, e.g. “Belmont House of Pizza” or “Tilton House of Pizza.” Because many towns have their own version of a “House of Pizza,” the phrase “House of Pizza” is considered a crowded trademark field because so many different businesses are using that exact phrase as the name of their restaurant.

 

Some real life examples of crowded trademark fields include ANTHONY’S as part of the name for Italian restaurants (see Anthony’s Pizza & Pasta Int’l Inc. v. Anthony’s Pizza Holding Co., 95 1271 USPQ2d (TTAB 2009), aff’d 415 Fed. Appx. 222 (Fed. Circ. 2010)) or UNITED in connection with financial services (see In re Unidos Financial Services, Inc. Serial No. 77126814 where the TTAB held that 25 registrations with the term UNITED in connection with financial services was conclusive evidence that the term is weak when used in connection with financial services).

 

There are now 79 trademark registrations that include UNITED in connection with "financial services."

 

Crowded Trademark Fields and Likelihood of Confusion Analysis

 

When determining whether a trademark is likely to cause confusion to consumers regarding a different trademark, courts and the United States Patent and Trademark Office (USPTO) balance many factors to come to their conclusion. Factors include the similarity of the trademarks, the similarity of the goods or services offered under the trademarks, the fame of the trademark and more. One of the factors is how many businesses in the field use the same or related trademarks. In other words, is there a crowded trademark field?

 

The most cited and important legal treatise on trademarks, McCarthy on Trademarks and Unfair Competition states that “in a ‘crowded’ field of similar marks, each member of the crowd, is relatively ‘weak’ in its ability to prevent use by others in the crowd.” Left unsaid is that it is also more difficult to enforce trademarks that exist in a crowded field against newcomers in the industry.

 

In other words, it is hard to claim broad trademark protection for terms or logos that are semi-popular in any given industry. For example, as stated above, the Trademark Trial and Appeal Board (TTAB) concluded that the 25 trademark registrations for UNITED in connection with financial services renders UNITED a term that is not worthy of broad trademark protection in the financial services industry.

 

Avoid Crowded Fields when Selecting a Trademark

 

When selecting a trademark, businesses may feel comfort selecting a trademark in a crowded field because they believe they will be able to fend off any trademark opposition or lawsuit. This may be true, but defending the case will still be expensive and cause unnecessary costs and business uncertainties.

 

More importantly though, if a business selects a trademark that is in a crowded field, they will have a much more difficult time enforcing their trademark rights against third parties because the trademark will be deemed to lack strong distinctiveness. If businesses want to stand out in the marketplace and build distinctive brands, they should avoid selecting a trademark in a crowded field. Learn more tips about selecting a trademark in our blog post on the topic here.

 

Do you have any questions about crowded trademark fields and how they impact a trademark likelihood of confusion analysis? Contact us today or fill out our free trademark consultation form and an attorney will get back to you soon.

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