Likelihood of confusion: what does it mean?

One of the most common rejections (“office actions”) the United States Patent and Trademark Office (USPTO) issues is under Section 2(d) of the Lanham Act.  This section of the law states that any trademark that so resembles a mark registered with the USPTO, or a mark or trade name previously used in the United States by another and not abandoned, which is likely to cause confusion, mistake or to deceive when used on or in connection with the goods of the applicant, the application should be rejected by the USPTO.  In English: if an application is so similar to an already registered trademark, such that it would cause confusion in the public, the USPTO will refuse registration to the applicant.

So… how does the USPTO determine whether two marks are “confusingly similar?”  The seminal case, In re E. I. du Pont de Nemours & Co., provided us with a set of guidelines (the “du Pont factors”) to use in making this decision, to wit:

(1)   The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression (and the marks do not need to be identical).

(2)   The similarity or dissimilarity and nature of the goods (or services) 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 probative fact.

Typically, the first and second factors are the two most important factors in making a determination of a likelihood of confusion, however, additional factors can provide probative value in a given matter- it all depends on the specific facts and circumstances.  Whether two marks and the goods/services those marks are used in conjunction with are confusingly similar is not a simple determination.  For instance, most people would probably not assume that beer and coffee are considered by the USPTO to be related goods.  Unfortunately, they are (as are beer, wine, and distilled spirits).  It is helpful to seek the assistance of an experienced trademark attorney if you have received an office action (rejection) from the USPTO due to a likelihood of confusion.  An experienced trademark attorney is familiar with the arguments (and case law) necessary to (hopefully) overcome these extremely detailed and confusing rejections.

For more information: Scott K. Burger

Updated: February 24, 2023