Trademarks & Likelihood of Confusion

The principle, or at least one of the principle, objectives of the common law of trademarks and the Lanham Act, often called the Trademark Act, is to reduce the likelihood of confusion as to the source of the goods or services associated with a trademark of service mark. As such, the standard employed by both the United States Patent and Trademark Office when examining federal trademark registration applications and the courts is "likelihood of confusion".

The USPTO has articulated the following statement as to the context and rational of the "likelihood of confusion" standard based upon case law (emphasis added):

The issue is not whether the respective marks themselves, or the goods or services offered under the marks, are likely to be confused but, rather, whether there is a likelihood of confusion as to the source or sponsorship of the goods or services because of the marks used thereon. See, e.g., Paula Payne Prods. Co. v. Johnson’s Publ’g Co., 473 F.2d 901, 902, 177 USPQ 76, 77 (C.C.P.A. 1973) (“[T]he question is not whether people will confuse the marks, but rather whether the marks will confuse people into believing that the goods they identify emanate from the same source.”); In re Majestic Distilling Co., 315 F.3d 1311, 1316, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003) (“[T]he...mistaken belief that [a good] is manufactured or sponsored by the same entity [as another good] ... is precisely the mistake that §2(d) of the Lanham Act seeks to prevent.”); In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993) (“The degree of ‘relatedness’ must be viewed in the context of all the factors, in determining whether the services are sufficiently related that a reasonable consumer would be confused as to source or sponsorship.”); In re Binion, 93 USPQ2d 1531, 1534, 1535 (TTAB 2009); In re Ass’n of the U.S. Army, 85 USPQ2d 1264, 1267-68, 1270 (TTAB 2007); Hilson Research Inc. v. Soc’y for Human Res. Mgmt., 27 USPQ2d 1423, 1429 (TTAB 1993) (“Although confusion, mistake or deception about source or origin is the usual issue posed under Section 2(d), any confusion made likely by a junior user’s mark is cause for refusal; likelihood of confusion encompasses confusion of sponsorship, affiliation or connection.”).

But how does a trademark applicant or trademark owner determine if there is "likelihood of confusion" as to particular trade or service marks? The U.S. Court of Customs and Patent Appeals, the precursor to the U.S. Court of Appeals for the Federal Circuit, articulated to the following factors, often called the DuPont Factors, as to "likelihood of confusion" In re E. I. du Pont de Nemours & Co.:

  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 or services as 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 (sales, advertising, length of use).
  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 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 (house mark, "family" mark, product mark).
  10. The market interface between 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, i. e., whether de minimis or substantial.
  13. Any other established fact probative of the effect of use. 

Given the foregoing factors, the determination as to "likelihood of confusion" depends heavily upon the facts and circumstances of each particular case and will often vary substantially from case to case.

This brief overview of some important considerations associated with trademark registration is by no means comprehensive. Always seek the advice of a competent professional when making important financial and legal decisions.

Steve Cook is an attorney at Cook & Cook. Although his office is located in Mesa, Arizona, he represents clients throughout the Phoenix, Arizona Metropolitan area including the following east valley cities: Scottsdale, Paradise Valley, Tempe, Chandler, & Gilbert.

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