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.
If you have any questions about trademark infringement or likelihood of confusion, please contact us for more information.
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. We make that determination on a case-by-case basis, 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:
- 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 . . . described in an application or registration or in connection with which a prior mark is in use.
- 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.
- 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 the 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 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.
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).
In any likelihood of confusion analysis, the two most critical factors are the similarities between the marks and the similarities between the goods and services. The DuPont factors are multiple rules to guide a practitioner when comparing trademarks. For example, the marks are to be compared in their entireties and must be considered in conjunction with the goods or services identified in the trademark application. Another important rule is that when assessing similarities in trademarks, the more similar the marks at issue, the less similar the goods and services need to be to find a likelihood of confusion and vice versa. The weight given to each relevant duPont factor will vary from case to case. As for the goods and services, they need not be identical or even competitive, to support a finding of likelihood of confusion. It is sufficient if the goods and services are related in some manner or if the circumstances surrounding their marketing are such that the same persons will see the marks and form a mistaken belief that the applicant and the registrants’ goods and/or services are from the same source or that the parties are affiliated or connected in some manner.
Let’s take a closer look at some of the DuPont Factors:
Similar in Appearance
Marks may be confusingly similar in appearance where there are similar terms or phrases or similar parts of terms or phrases appearing in both applicant’s and registrant’s mark. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987) (COMMCASH and COMMUNICASH); In re Phillips-Van Heusen Corp., 228 USPQ 949 (TTAB 1986) (21 CLUB and “21” CLUB (stylized)); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985) (CONFIRM and CONFIRMCELLS); In re Collegian Sportswear Inc., 224 USPQ 174 (TTAB 1984) (COLLEGIAN OF CALIFORNIA and COLLEGIENNE); In re Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983) (MILTRON and MILLTRONICS); In re BASF A.G., 189 USPQ 424 (TTAB 1975) (LUTEXAL and LUTEX); TMEP §1207.01(b)(ii)-(iii).
First Word, Prefix, or Syllable may be More Important
Consumers are generally more inclined to focus on the first word, prefix or syllable in any trademark or service mark. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F. 3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005); see also Mattel Inc. v. Funline Merch. Co., 81 USPQ2d 1372, 1374-75 (TTAB 2006); Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered” when making purchasing decisions).
Marks are Compared in their Entireties
Although a disclaimed portion of a mark certainly cannot be ignored, and the marks must be compared in their entireties, one feature of a mark may be more significant in creating a commercial impression. Disclaimed matter is typically less significant or less dominant when comparing marks. See In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Nat’l Data Corp., 753 F.2d 1056, 1060, 224 USPQ 749, 752 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii).
Overall Impression Matters more than a Side-by-Side Comparison
The question is not whether people will confuse the marks, but whether the marks will confuse people into believing that the goods and/or services they identify come from the same source. In re West Point-Pepperell, Inc., 468 F.2d 200, 201, 175 USPQ 558, 558-59 (C.C.P.A. 1972); TMEP §1207.01(b). For that reason, the test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side-by-side comparison. The question is whether the marks create the same overall impression. See Recot, Inc. v. M.C. Becton, 214 F.3d 1322, 1329-30, 54 USPQ2d 1894, 1899 (Fed. Cir. 2000); Visual Info. Inst., Inc. v. Vicon Indus. Inc., 209 USPQ 179, 189 (TTAB 1980). The focus is on the recollection of the average purchaser who normally retains a general rather than specific impression of trademarks. Chemetron Corp. v. Morris Coupling & Clamp Co., 203 USPQ 537, 540-41 (TTAB 1979); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975); TMEP §1207.01(b).
Goods and Services Need Not be Identical or Directly Competitive
The goods and services of the parties need not be identical or directly competitive to find a likelihood of confusion. See Safety-Kleen Corp. v. Dresser Indus., Inc., 518 F.2d 1399, 1404, 186 USPQ 476, 480 (C.C.P.A. 1975); TMEP §1207.01(a)(i). Rather, they need only be related in some manner, or the conditions surrounding their marketing are such that they would be encountered by the same purchasers under circumstances that would give rise to the mistaken belief that the goods and/or services come from a common source. In re Total Quality Group, Inc., 51 USPQ2d 1474, 1476 (TTAB 1999); TMEP §1207.01(a)(i); see, e.g., On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086-87, 56 USPQ2d 1471, 1475-76 (Fed. Cir. 2000); In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1566-68, 223 USPQ 1289, 1290 (Fed. Cir. 1984).
The Length of Time During and the Conditions Under Which There has been Concurrent use Without Evidence of Actual Confusion
In Majestic Distilling, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003), the court considered 16 years of concurrent use with no evidence of confusion, but still found confusion likely. In Majestic the court also observed that, under the DuPont factor of “the nature and extent of any actual confusion”, the lack of evidence of actual confusion, by itself, has “little evidentiary value” in the ex parte context. This factor requires a separate consideration. Also note that if two parties have similar marks in use for over 40 years, that testimony must be considered. In Re: Guild Mortgage Company, 2017-2620 (Fed. Cir. January 14, 2019).
Depending on the type of trademark, different analytical approaches will be implemented. For example, if the mark consists of multiple terms, then the Examining Attorney will decide whether a portion of the mark is dominant in regard to creating a commercial impression. In another case, if it is determined that the trademark is descriptive or weak (compared to a coined term or a distinctive mark), it may be entitled to a narrow scope of protection. Yet in the case of design marks, the comparison must focus on the visual similarities. Each likelihood of confusion analysis will vary depending on the facts of each case.
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 Circuit – Polaroid 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 Circuit – Lapp 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 Circuit – Pizzeria 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 Circuit – Barbecue 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 Circuit – AMF 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 Circuit – Tally-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.