What if you allowed someone to use a trademark that is similar to yours for a pretty long time? The owners of the SMART ONES trademark for frozen foods, snacks and desserts can answer that question. When the owner of SMART BALANCE for heart healthy butter substitutes filed intent to use applications for frozen foods, SMART ONES opposed them citing a likelihood of confusion. The Trademark Trial and Appeal Board (TTAB) sided with SMART BALANCE and allowed the applications to go through. The TTAB found that a lot of factors weighed in favor of a likelihood of confusion, like channels of trade, relatedness of goods, goods sold to the same classes of consumers and a low degree of purchasing care when buying the products. But, the two marks have peacefully co-existed for 17 years with very little evidence of customer confusion.

TAKE AWAY: If someone is using a trademark that is similar to yours and likely to cause confusion, you need to address that as soon as possible. Sitting on your trademark rights can hurt you by barring your ability to stop the other user. BONUS TAKE AWAY: The TTAB also held that the common term, SMART, is laudatory and therefore too weak to overcome the visual and phonetic differences between the two marks. So, when choosing a trademark, try to stay away from laudatory or descriptive terms. They weaken your mark and make it harder to protect.