The following is an edited transcript of my video What Are the DuPont Factors in a Trademark Confusion Analysis?
A topic that comes up all the time in our line of work is the DuPont factors, and the analysis of them. This famous case (called In re E. I. DuPont DeNemours & Co., from the Court of Patent Appeals in 1973, that then became known as the Court of Appeals for the Federal Circuit) laid out the factors for analyzing a likelihood of confusion in any comparison of trademarks at the USPTO.
It’s important to note at the outset that in every case, the facts are unique, and the weight given to the different factors varies. The factors are:
- The similarity or dissimilarity of the marks, in appearance, sound, connotation, and commercial impression.
- The similarity or dissimilarity and the nature of the goods or services in the relevant applications or registrations at the USPTO.
- The similarity or dissimilarity of established, likely to continue channels of trade.
- The conditions under which, and buyers to whom, sales are made. Is it a sale that’s made quickly on the fly? Or is it a type of transaction, product, or service where there’s going to a great deal of time, consideration, and research involved in making a purchase?
- The fame, if any, of the prior mark.
- The number and nature of similar marks in use on similar goods and services.
- The nature and extent of any actual confusion, if there has been, between the two marks at issue.
- The length of time and the conditions under which there’s been concurrent use of the marks without any evidence of actual confusion, so sort of the flip of actual confusion.
- The variety of goods on which the mark is used or not used.
- The market interface between the applicant and the owner of the prior mark.
- The extent to which the applicant has a right to exclude others from use of its mark on its goods.
- The extent of potential confusion, and
- A good catch-all, any court would like to have, any other established fact probative of the effect of use.
In the vast majority of cases, the first two factors are going to carry the majority or all of the work in deciding whether or not there’s a likelihood of confusion. However, the other factors can also be important. But it’s important to also remember that there’s no litmus test. There’s no singular rule, that is one big reason why there is so much gray area and quite a bit of subjectivity in the world of trademarks, and why in doing any kind of an analysis of whether or not there’s potential confusion, or lack thereof, it is important to work with someone who re31ally understands and has gone through this analysis many, many times.
