Likelihood Of Confusion With Existing Trademark

Liklihood of ConfusionThe primary purpose of using a trademark is to distinguish or identify the source of a good or service that is used in commerce. Trademark law wants to avoid any consumer confusion with respect to the source of a product or service. A USPTO examining attorney will prohibit the registration of a trademark if the examining attorney determines that using a proposed trademark would likely cause confusion (likelihood of confusion) with an existing trademark. When the examining attorney reviews a trademark application, he/she must only consider the facts of the application that are in front of him/her and ignore any prior trademark ruling or decision.

Trademark law emphasizes that no one factor will determine whether consumers would likely confuse one trademark with another. All of the factors are looked at as a whole. In certain situations, some factors may be given more or less weight than others. The Trademark Trial and Appeal Board follows what are known as the “du Pont” factors when determining likelihood of confusion.

Trademark law prevents the registration of a trademark if the examining attorney determines that using a proposed trademark would likely cause confusion with an existing trademark.

Du Pont Factors

  • The similarity or dissimilarity of the trademarks in their entireties as to appearance, sound, connotation and commercial impression;
  • 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;
  • The similarity or dissimilarity of established, likely to continue trade channels;
  • The fame of the prior mark (sales, advertising, length of use);
  • 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 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 (house mark, “family” mark, product mark);
  • The market interface between the applicant and the owner of a prior mark: a mere “consent” to register or use, agreement provisions designed to preclude confusion, i.e. limitations on continued use of the marks by each party, assignment of mark, application, registration and good will of the related business, laches and estoppel attributable to owner of prior mark and indicative lack of confusion;
  • The extent to which applicant has a right to exclude others from use of its mark on its goods;
  • The extent of potential confusion, i.e., whether de minimis or substantial; and
  • Any other established fact probative of the effect of use.