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What are the DuPont factors?

The scope of a trademark – either its use or its application for registration – is determined by whether there is “likelihood of confusion” (note that this is different from whether there has been any actual confusion), between that trademark and another trademark in the minds of the consuming public. Likelihood of confusion is generally determined by reviewing a set list of factors which, depending on the judicial circuit, range from 7 to 13 in number.

If your trademark is too much like someone else’s trademark and that someone else registered their trademark with the USPTO or their trademark application was pending before your application, your application is likely to be refused. These factors are also used in comparing trademarks between parties in a trademark infringement lawsuit.

In the Federal Circuit, for example, these are called the DuPont factors:

We determine likelihood of confusion by focusing on the question whether the purchasing public would mistakenly assume that the applicant’s goods originate from the same source as, or are associated with, the goods in the cited registrations. [citation]. We make that determination on a case-by-case basis, [citation], aided by the application of the factors set out in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). Those factors are:

1.         The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression.

2.         The similarity or dissimilarity and nature of the goods . . . described in an application or registration or in connection with which a prior mark is in use.

3.         The similarity or dissimilarity of established, likely-to-continue trade channels.

4.         The conditions under which and buyers to whom sales are made, i.e. “impulse” vs. careful, sophisticated purchasing.

5.         The fame of the prior mark.

6.         The number and nature of similar marks in use on similar goods.

7.         The nature and extent of any actual confusion.

8.         The length of time during and the conditions under which there has been concurrent use without evidence of actual confusion.

9.         The variety of goods on which a mark is or is not used.

10.        The market interface between the applicant and the owner of a prior mark.

11.     The extent to which applicant has a right to exclude others from use of its mark on its goods.

12.        The extent of potential confusion.

13.        Any other established fact probative of the effect of use.

Id. at 1361, 177 USPQ at 567. Not all of the DuPont factors may be relevant or of equal weight in a given case, and “any one of the factors may control a particular case,” In re Dixie Rests., Inc., 105 F.3d 1405, 1406-07, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997).

The circuit courts around the United States have stated similar standards for a likelihood of confusion between marks of parties in litigation.

First Circuit Borinquen Biscuit Corp. v. M.V. Trading Corp., 443 F.3d 112 (1st Cir., 2006)

This court has enumerated eight factors to guide the inquiry into likelihood of confusion:

(1) the similarity of the marks;

(2) the similarity of the goods;

(3) the relationship between the parties’ channels of trade;

(4) the relationship between the parties’ advertising;

(5) the classes of prospective purchasers;

(6) evidence of actual confusion;

(7) the defendant’s intent in adopting its mark; and

(8) the strength of the plaintiff’s mark.

Astra Pharm. Prods., Inc. v. Beckman Instruments, Inc., 718 F.2d 1201, 1205 (1st Cir.1983); accord Pignons S.A. de Mecanique de Precision v. Polaroid Corp., 657 F.2d 482, 487 (1st Cir.1981). A proper analysis takes cognizance of all eight factors but assigns no single factor has dispositive weight.

Second CircuitPolaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492, 495 (2d Cir.) (“Polaroid”), cert. denied, 368 U.S. 820 (1961)

In order to determine if there is a likelihood of consumer confusion, the factors are:

(1) the strength of the plaintiff’s mark;

(2) the similarity of plaintiff’s and defendant’s marks;

(3) the competitive proximity of the products;

(4) the likelihood that plaintiff will “bridge the gap” and offer a product like defendant’s;

(5) actual confusion between products;

(6) good faith on the defendant’s part;

(7) the quality of defendant’s product; and

(8) the sophistication of buyers.  

Third CircuitLapp Factors – Interpace Corp. v. Lapp, Inc., 721 F.2d 460, 463 (3d Cir.1983)  

Multi-factor test that assesses the following:

(1) degree of similarity between the owner’s mark and the alleged infringing mark;

(2) strength of the owner’s mark;

(3) price of the goods and other factors indicative of the care and attention expected of consumers when making a purchase;

(4) length of time the defendant has used the mark without evidence of actual confusion;

(5) intent of the defendant in adopting the mark;

(6) evidence of actual confusion;

(7) whether the goods, though not competing, are marketed through the same channels of trade and advertised through the same media;

(8) the extent to which the targets of the parties’ sales efforts are the same;

(9) the relationship of the goods in the minds of consumers because of the similarity of function; and

(10) other facts suggesting that the consuming public might expect the prior owner to manufacture a product in the defendant’s market or that he is likely to expand into that market.

Fourth CircuitPizzeria Uno Corp. v. Temple, 747 F.2d 1522, 1527 (4th Cir.1984).

A court should consider:

(1) the strength or distinctiveness of the plaintiff’s mark,

(2) the similarity of the two parties’ marks,

(3) the similarity of the goods and services the marks identify,

(4) the similarity of the facilities the two parties use in their businesses,

(5) the similarity of advertising used by the two parties,

(6) the defendant’s intent, and

(7) actual confusion.

These factors are not of equal importance or equal relevance in every case.

Fifth Circuit – Am. Rice Inc. v. Producers Rice Mill, Inc., 518 F.3d 321, 329 (5th Cir. 2008)

The likelihood of confusion standard in trademark infringement claims involves consideration of eight nonexhaustive factors:

(1) the type of mark allegedly infringed,

(2) the similarity between the two marks,

(3) the similarity of the products or services,

(4) the identity of the retail outlets and purchasers,

(5) the identity of the advertising media used,

(6) the defendant’s intent, and

(7) any evidence of actual confusion.

Sixth Circuit – Frisch’s Rest., Inc. v. Shoney’s Inc., 759 F.2d 1261, 1264 (6th Cir. 1985)

The factors that courts should examine to determine whether the alleged infringement of a trade or service mark causes a “likelihood of confusion” among consumers. These factors include the

(1) strength of plaintiff’s mark;

(2) relatedness of the goods;

(3) similarity of the marks;

(4) evidence of actual confusion;

(5) marketing channels used;

(6) likely degree of purchaser care;

(7) defendant’s intent in selecting the mark;

(8) likelihood of expansion of the product lines.

These factors are simply a guide to help determine whether confusion would be likely to result from simultaneous use of the two contested marks. They imply no mathematical precision, and a plaintiff need not show that all, or even most, of the factors listed are present in any particular case to be successful.  

Seventh CircuitBarbecue Max, Incorp. v. 551 Ogden, Incorp., 235 F.3d 1041 (7th Cir., 2000)

Seven factors comprise the likelihood of confusion test:

(1) similarity between the marks in appearance and suggestion;

(2) similarity of the products;

(3) area and manner of concurrent use;

(4) degree of care likely to be exercised by consumers;

(5) strength of complainant’s mark;

(6) actual confusion; and,

(7) intent of defendant to ‘palm off his product as that of another.’

Eighth Circuit – SquirtCo v. Seven-Up Co., 628 F.2d 1086 (C.A.8 (Mo.), 1980):

(1) the strength of the trademark;

(2) the similarity between the plaintiff’s and defendant’s marks;

(3) the competitive proximity of the parties’ products;

(4) the alleged infringer’s intent to confuse the public;

(5) evidence of any actual confusion; and

(6) the degree of care reasonably expected of the plaintiff’s potential customers.

These factors are not a distinct test, but represent the sort of considerations which a court should consider in determining whether likelihood of confusion exists.

Ninth CircuitAMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir.1979). The eight factors are as follows:

(1) strength of the mark;

(2) proximity of the goods;

(3) similarity of the marks;

(4) evidence of actual confusion;

(5) marketing channels used;

(6) type of goods and the degree of care likely to be exercised by the purchaser;

(7) defendant’s intent in selecting the mark; (8) likelihood of expansion of the product lines.         

These factors are to be considered in reaching a decision on the issue of likelihood of confusion. However, “[n]o mechanistic formula or list can set forth in advance” the variety of elements that comprise the market context from which likelihood of confusion must be determined. Restatement (Third) of Unfair Competition § 21, comment a (1995). The Sleekcraft court noted that this “list is not exhaustive” and “[o]ther variables may come into play depending on the particular facts presented.” Sleekcraft, 599 F.2d at 348 n. 11.

Tenth Circuit Sally Beauty Co., Inc. v. Beautyco, Inc., 304 F.3d 964 (10th Cir.2002)

 Likelihood of confusion is typically evaluated according to a six-factor test in which the court considers:       

(1) the degree of similarity between the marks;

(2) the intent of the alleged infringer in using the mark;

(3) evidence of actual confusion;

(4) similarity of products and manner of marketing;

(5) the degree of care likely to be exercised by purchasers; and

(6) the strength or weakness of the marks.

Eleventh CircuitTally-Ho, Inc. v. Coast Community College District, 889 F.2d 1018 (11th Cir.1989)

The seven factors that this Circuit uses for determining the likelihood of confusion are

(1) the type of mark;

(2) the similarity of the two marks;

(3) the similarity of the goods;

(4) the identity of customers and similarity of retail outlets, sometimes called the similarity of trade channels;

(5) the similarity of advertising;

(6) the intent, i.e., good or bad faith, of the alleged infringer; and

(7) evidence of actual confusion, if any.