Trademark Likelihood of Confusion Factors. Episode 95

Previous Episodes on Trademarks

I had a few episodes about trademarks back in Episodes 68, 69, and 70, so I’d suggest going back to those—or even to Episode 1, which was about intellectual property basics. In this episode, I’m going to talk about the factors used to determine whether your trademark is confusingly similar to another mark.

These are important to know if your trademark gets rejected, if you get sued for trademark infringement and need to show your trademark isn’t confusingly similar to another’s, or if you want to sue someone else and need to convince a judge that their mark is confusingly similar to yours.

Overview of Confusion Tests

Different courts use different tests, but in the end, the outcome probably won’t vary much regardless of which set of factors is used. We’re going to look at the United States Patent and Trademark Office (USPTO) factors, which come from a 1973 case known as the DuPont case. There are 13 DuPont factors.

Factor 1: Similarities of the Marks

The first factor is the similarity of the marks in appearance, sound, connotation, and commercial impression. Are the marks identical? If they are, that’s a strong factor in favor of finding confusion.

Let’s say there’s a streaming music company called Pandora, and another company comes along also offering streaming music and calls itself “Pindora” with an “I.” That’s a pretty similar mark, and there might be confusion.

What if it’s “Pindori”? Or “Binbora”? Or “Bindori”? You can see that the farther away you get from “Pandora,” the less likely there will be confusion. So this factor measures how close the marks really are.

Factor 2: Relatedness of the Goods or Services

The second factor is how related the products or services are between you and your competitor. If one company does online music and another does jewelry, consumers probably wouldn’t think it’s the same company doing both.

For example, there’s Pandora Jewelry and Pandora Music. The goods and services are very different, so this factor would weigh against a finding of confusion.

These first two factors—similarities of the marks and similarities of the goods—are really the most important.

Factor 3: Similarities of Trade Channels

The third factor is the similarity of the established trade channels. Are the goods or services being sold in the same type of stores or online platforms?

If one person sells products at a high-end jewelry store and another sells at a dollar store, the trade channels are quite different. But if one sells at a high-end jewelry store and another at a high-end purse store, the channels are a bit more similar, and that could increase the likelihood of confusion.

Factor 4: Conditions Under Which Sales Are Made

The fourth factor is the conditions under which sales are made. Is it an impulse buy or something purchased after careful consideration?

Cars are not typically impulse buys, but candy bars might be. So similar marks on those two types of products would weigh differently in the confusion analysis.

Factor 5: Fame of the Prior Mark

The fifth factor is the fame of the prior mark. If you want to call your company “McDonald’s,” even if you’re not selling hamburgers, you might not be allowed to do it. McDonald’s is so famous that the name carries broad protection across many categories.

Factor 6: Nature of Similar Marks on Similar Goods

The sixth factor involves the nature of similar marks on similar goods—how common or unique the marks are within a given industry.

Factor 7: Actual Confusion

The seventh factor is whether there’s been actual confusion. Do you have any evidence that people were genuinely confused?

For example, did you conduct a survey and find that 10% of people thought they were buying from one company but actually purchased from your competitor because of the name? That would weigh in favor of a finding of confusion.

What if only 0.1% of people were confused? That wouldn’t weigh as heavily, but it still counts. A survey showing 25% confusion would weigh much more significantly.

Factor 8: Length of Time Without Actual Confusion

The eighth factor is the length of time the marks have coexisted without actual confusion. If the marks have been used side-by-side for 20 years with no confusion, that weighs against a finding of likelihood of confusion.

But if the products have only been on the market for six months, that might not be enough time to determine whether confusion exists or will arise.

Factor 9: Variety of Goods on Which the Mark Is Used

The ninth factor is the variety of goods on which the senior user uses the mark. If the senior user places their mark on a wide range of goods, people might assume that a new product bearing a similar mark is just another item from the same company. This increases the risk of confusion.

Factor 10: Market Interface Between the Parties

The tenth factor is the market interface between the marks being disputed. This includes things like agreements, settlements, or consent between the parties regarding trademark use.

Factor 11: Right to Exclude Others

The eleventh factor is the extent to which a trademark holder has a right to exclude others from using the mark. Strong, registered marks tend to carry more weight here.

Factor 12: Extent of Potential Confusion

The twelfth factor is the extent of potential confusion. How much confusion is likely, and how significant would its impact be?

Factor 13: Other Established Facts

The thirteenth and final factor is a catch-all—any other facts relevant to the effect of use. These can include anything not covered by the other 12 factors but still relevant to the analysis.

How Many Factors Matter?

Not all factors are going to be relevant in every analysis. As I mentioned earlier, the most important ones are the similarities of the marks and the relatedness of the goods or services.

The test I’ve discussed is the DuPont test. Personally, I think it’s too many factors to analyze to determine likelihood of confusion.

Other Trademark Confusion Tests

Some courts use different tests. For example:

The Sleekcraft factors, used in the Ninth Circuit, are for infringement and include 8 factors. Many overlap with DuPont, though some are different.

The Pignons factors are used in the First Circuit.

The Polaroid factors are used in the Second Circuit.

The LAPP factors are used in the Third Circuit, and there are 10 of them.

Most courts use a test that includes between 6 and 10 factors, and in the end, the result probably won’t change much regardless of which test is used.

I’m Adam Diament, and until next time, keep on inventing.