1207.01 Likelihood of Confusion
In the ex parte examination of a trademark application, a refusal under §2(d) is normally based on the examining attorney’s conclusion that the applicant’s mark, as used on or in connection with the specified goods or services, so resembles a registered mark as to be likely to cause confusion. See TMEP §1207.02 concerning application of the §2(d) provision relating to marks that so resemble another mark as to be likely to deceive, and TMEP §1207.03 concerning §2(d) refusals based on unregistered marks (which generally are not issued in ex parte examination).
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.").
The examining attorney must conduct a search of USPTO records to determine whether the applicant’s mark so resembles any registered mark(s) as to be likely to cause confusion or mistake, when used on or in connection with the goods or services identified in the application. The examining attorney also searches pending applications for conflicting marks with earlier effective filing dates. See TMEP §§1208-1208.03(c) regarding conflicting marks. The examining attorney must place a copy of the search strategy in the record.
If the examining attorney determines that there is a likelihood of confusion between applicant’s mark and a previously registered mark or marks, the examining attorney refuses registration of the applicant’s mark under §2(d). Before citing a registration, the examining attorney must check the automated records of the USPTO to confirm that any registration that is the basis for a §2(d) refusal is an active registration. See TMEP §716.02(e) regarding suspension pending cancellation of a cited registration under §8 of the Act or expiration of a cited registration for failure to renew under §9 of the Act.
Also, if USPTO records indicate that an assignment of the conflicting registration has been recorded, the examining attorney must check the automated records of the Assignment Recordation Branch of the USPTO to determine whether the conflicting mark has been assigned to applicant.
In the seminal case involving §2(d), In re E. I. du Pont de Nemours & Co., the U.S. Court of Customs and Patent Appeals discussed the factors relevant to a determination of likelihood of confusion. 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973). In setting forth the factors, the court cautioned that, with respect to determining likelihood of confusion, "[t]here is no litmus rule which can provide a ready guide to all cases." Id. at 1361, 177 USPQ at 567. Not all of the factors are relevant and only those relevant factors for which there is evidence in the record must be considered. Id. at 1361-62, 177 USPQ at 567-68; see also In re Mighty Leaf Tea, 601 F.3d 1342, 1346, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010) ("Not all of the DuPont factors are relevant to every case, and only factors of significance to the particular mark need be considered."); In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1406-07, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997)); Cunningham v. Laser Golf Corp., 222 F.3d 943, 946, 55 USPQ2d 1842, 1845 (Fed. Cir. 2000). Furthermore, the significance of a particular factor may differ from case to case. See du Pont, 476 F.2d at 1361-62, 177 USPQ at 567-68; Dixie Rests., 105 F.3d at 1406-07, 41 USPQ2d at 1533 (noting that "any one of the factors may control a particular case").
Although the weight given to the relevant du Pont factors may vary, the following two factors are key considerations in any likelihood of confusion determination:
- The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.
- The relatedness of the goods or services as described in the application and registration(s).
See, e.g., Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976); In re Iolo Techs., LLC, 95 USPQ2d 1498, 1499 (TTAB 2010); In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1244 (TTAB 2010); In re Thor Tech, Inc., 90 USPQ2d 1634, 1635 (TTAB 2009).
The following factors may also be relevant in an ex parte likelihood-of-confusion determination and must be considered if there is pertinent evidence in the record:
- The similarity or dissimilarity of established, likely-to-continue trade channels.
- The conditions under which and buyers to whom sales are made, i.e., "impulse" vs. careful, sophisticated purchasing (see TMEP §1207.01(d)(vii)).
- The number and nature of similar marks in use on similar goods (see TMEP §1207.01(d)(iii)).
- The existence of a valid consent agreement between the applicant and the owner of the previously registered mark (see TMEP §1207.01(d)(viii)).
See, e.g., du Pont, 476 F.2d at 1362-63, 177 USPQ at 568-69; In re Thor Tech, Inc., 113 USPQ2d 1546 (TTAB 2015); In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1203-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1272-74 (TTAB 2009); Ass’n of the U.S. Army, 85 USPQ2d at 1271-73.
As should be clear from the foregoing, there is no mechanical test for determining likelihood of confusion and "each case must be decided on its own facts." Du Pont, 476 F.2d at 1361, 177 USPQ at 567. In some cases, a determination that there is no likelihood of confusion may be appropriate, even where the marks are similar and the goods/services are related, because these factors are outweighed by other factors, such as differences in the relevant trade channels of the goods/services, the presence in the marketplace of a significant number of similar marks in use on similar goods/services, the existence of a valid consent agreement between the parties, or another established fact probative of the effect of use. For example, in In re Strategic Partners, Inc., 102 USPQ2d 1397 (TTAB 2012), the Board reversed a refusal to register the mark ANYWEAR (in stylized text), for "footwear," finding no likelihood of confusion with the registered mark ANYWEAR BY JOSIE NATORI (and design), for "jackets, shirts, pants, stretch T-tops and stoles." Given the similarity in the marks and the relatedness of the goods, the Board stated that "under usual circumstances" it would conclude that confusion is likely to occur; however, an "unusual situation" compelled the Board "to balance the similarities between the marks and goods against the facts that applicant already owns a registration for a substantially similar mark for the identical goods, and that applicant’s registration and the cited registration have coexisted for over five years." Id. at 1399. Applicant’s prior registration of ANYWEARS for goods including footwear was substantially similar to the applied-for mark ANYWEAR for the same goods, and the registration had achieved incontestable status. Id. Basing its decision on the thirteenth du Pont factor, which "relates to ‘any other established fact probative of the effect of use,’" the Board determined that this factor outweighed the others and confusion was unlikely. Id. at 1399-1400 (quoting du Pont, 476 F.2d at 1361, 177 USPQ at 567).
The decision in Strategic Partners may be applied and weighed against a §2(d) refusal in the limited situation where: (1) an applicant owns a prior registration for the same mark or a mark with no meaningful difference from the applied-for-mark; (2) the identifications of goods/services in the application and applicant’s prior registration are identical or identical in relevant part; and (3) the applicant’s prior registration has co-existed for at least five years with the registration being considered as the basis for the Section 2(d) refusal. See Id. at 1400; cf. In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d 1790, 1793 (TTAB 2017) (distinguishing Strategic Partners and finding that the 3½-year coexistence of applicant’s prior registration and the cited registration was a relevant consideration but did not outweigh the other relevant du Pont factors)
The determination of likelihood of confusion under §2(d) in an intent-to-use application under §1(b) of the Trademark Act does not differ from the determination in any other type of application.