You did the right thing to protect your brand or new product name, and you successfully submitted your trademark application to the U.S. Patent and Trademark Office. After months of waiting, you finally receive word from the USPTO. But it’s an email titled OFFICE ACTION with a warning that failure to respond will cause you to abandon your trademark application.
Don’t worry, receiving an Office Action does not mean that your application has been denied, rather that the USPTO needs more information or there were problems with your initial filing. There are many reasons that trademark applications are refused, but one of the most common is “likelihood of confusion.”
What does “likelihood of confusion” mean to the USPTO?
Trademarks help consumers identify the source of the goods and services they purchase. Because of this, the USPTO examining attorney tries to make sure that a new trademark application won’t be confused with an existing trademark registration. When the examining attorney thinks the new application and existing registration may confuse the consumer as to the source of the goods or services, the trademark application may be rejected under the “likelihood of confusion” legal standard. “
Likelihood of confusion” is a specific term that means something different to trademark attorneys than the dictionary definitions of “likelihood” and “confusion.” The term comes from the way that the USPTO and courts have interpreted Section 2(d) of the Trademark Act. The Trademark Manual of Examining Procedure is published by the USPTO to provide guidance for examining attorneys and trademark applicants. It discusses when a trademark will be refused for likelihood of confusion in TMEP § 1207.01.
How does the USPTO determine likelihood of confusion?
There is no clear rule or test that you can easily apply to figure out if your mark is likely to be confused (legally) with another mark. Unfortunately, it’s not as simple as asking a bunch of people if they are actually confused by the proposed mark. The USPTO uses 13 factors that were originally described in a court case to make its determination. In re E.I. DuPont DeNemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973).
Some DuPont factors are more important than others. Not every factor is relevant to every case, and the most important factor in one case may not be important in a different one. As like “likelihood of confusion” means a special thing to trademark attorneys, the DuPont factors have taken on special meanings based on how they have been interpreted by the USPTO and courts since they were first established in 1973.
What are the 13 DuPont Factors to determine likelihood of confusion?
The 13 DuPont 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 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: (a) a mere "consent" to register or use. (b) agreement provisions designed to preclude confusion, i. e. limitations on continued use of the marks by each party. (c) assignment of mark, application, registration and good will of the related business. (d) laches and estoppel attributable to owner of prior mark and indicative of lack of confusion.
(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.
What are the most important DuPont factors?
While every case is different, the first DuPont factor is usually the most important: the similarity of the marks themselves. If you are trying to register a mark that looks and sounds the same as an existing mark, that will be an important factor in whether your mark causes confusion with the old mark.
Examiners consider the way the mark looks, how it sounds, how it is spelled, and any other factors that promote a particular impression in the minds of consumers. A trademark attorney can help you identify distinguishing characteristics in your mark and present these features to the USPTO in a persuasive way. Attorneys have access to case law and USPTO determinations that can help them identify the best way to describe the differences in your mark and focus on distinctions that have mattered to USPTO examining attorneys in past cases.
The second DuPont factor is the second most important factor in a majority of “likelihood of confusion” cases. The USPTO examining attorney will consider if you are trying to use your trademark to promote goods or services that are similar to goods or services already in use by an existing trademark registration.
Sometimes the second DuPont factor does not help you overcome the similarities of your mark. If you are trying to register a mark to be used on a new beer, and the similar mark is used on a cigarette, you might focus on the second DuPont factor in your response because beer is not a similar good to a cigarette. However, a trademark attorney would make sure to analyze additional factors, knowing that a likelihood of confusion can exist with two distinct goods, even in the case of beer and cigarettes.
Where can you get help responding to a “likelihood of confusion” Office Action?
The USPTO has a section of its website dedicated to providing examples of marks that are confusingly similar and how different goods and services are related. The likelihood of confusion section of the TMEP can give you some guidance on how courts have interpreted the DuPont factors, but it is not a complete list of cases.
The good news is that you don’t have to figure out how to use the DuPont factors on your own. An experienced trademark attorney has the knowledge and resources necessary to craft a detailed, compelling response to your Office Action. An attorney will make sure that you respond on time and completely to protect your rights and give you the best chance of overcoming the initial likelihood of confusion determination.