Under §2(d) of the Lanham Act, marks that are confusingly similar may not be registered with the USPTO.  When it comes to determining likelihood of confusion, the examining attorney considers the Dupont Factors. Often, the first two: (1) The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. (2) The relatedness of the goods or services as described in the application and registration(s), hold the most weight. However, there is no precedent that states that the first two are the most important. All of the factors must be considered equally in light of the evidence provided in each case. In the case below, a decision made by the Trademark Trial and Appeal Board was vacated and remanded by the U.S. Court of Appeals for the Federal Circuit, because the Board failed to consider all of the factors for which there was evidence.

In 2017, the Trademark Trial and Appeal Board affirmed the §2(d) refusal of the mark GUILD MORTAGE COMPANY for “mortgage banking services, namely, origination, acquisition, servicing, securitization and brokerage of mortgage loans.” (MORTGAGE COMPANY was disclaimed) Finding it confusingly similar with the registered mark GUILD INVESTMENT MANAGEMENT for “investment advisory services.” (INVESTMENT MANAGEMENT was disclaimed) In light of this, the Applicant appealed to the U.S. Court of Appeals for the Federal Circuit (CAFC).  In 2019, The CAFC issued a decision that vacated and remanded the TTAB’s decision “for further proceedings consistent the [its] opinion.” The CAFC stated that the Board failed to address the applicant’s arguments and evidence related to the eighth Dupont Factor, which examines the length of time during and conditions under which there has been concurrent use without evidence of actual confusion.

In a 2020 precedential opinion, on remand from the CAFC, the Board issued a final decision in regard to the mark GUILD MORTGAGE COMPANY.  As instructed, the Board reexamined the case giving more consideration to the eighth Dupont Factor. Starting with the first factor, the Board found that the dominant term in both marks was “guild.” Therefore, it ultimately found that the similarities between the marks, in accordance with “guild(‘s)” dictionary definition and overall commercial impression, outweighed the differences in sight and sound. The Board found that the first Dupont Factor weighed in favor of a finding of likelihood of confusion. As to the second factor, which examines the parties’ involved services, submissions of third-party registrations covering both mortgage banking and investment advisory services were enough to convince the Board that the services are related. Moreover, in accordance with the third factor, the Board found that the same consumers who seek mortgage banking services may also seek investment advisory services. Therefore, the channels of trade and classes of consumers are likely to overlap. Moving to the fourth factor, which examines the degree of purchaser care, the Board made its determination in light of Stone Lion Capital, 110 USPQ2d at 1163, which states that the decision must be based on the least sophisticated consumer. Regardless, the Board found that “consumers may exercise a certain degree of care in investing money, if not perhaps in seeking a mortgage loan for which they simply wish to get funded.” In sum, the fourth factor weighed mildly against finding a likely confusion.

Finally, the Board turned to examine the factor for which the case was remanded, the eighth factor. This factor looks at the length of time during and conditions under which there has been concurrent use without evidence of actual confusion. The eighth Dupont Factor requires consideration of the actual market condition, as opposed to the other factors in this case that require analysis based on the application and cited registration and do not consider evidence of how the Applicant and Registrant actually rendered their services in the marketplace. Considering the actual market condition, both services were based in Southern California and operated there for approximately 40 years with no evidence of actual confusion. Not only did both parties conduct businesses in the same state, they ultimately expanded into other states as well. However, there was no evidence to indicate any specific geographical areas of overlap between the consumer markets for the different services. Ultimately, though the parties both conducted business in California, and potentially in some of the same states nationwide, there was not enough evidence to show that “in the actual marketplace, the same consumers have been exposed to both marks for the respective services…” In conclusion, the Board deemed the eighth Dupont Factor neutral and after balancing the other relevant factors, found confusion likely and affirmed the refusal to register under §2(d) of the Lanham Act.

Though the Board ultimately ended up at the same conclusion as it did in 2017, it may have turned out differently if both parties had been heard from. In an ex parte context, there was not an opportunity for the Board to hear from the Registrant in regard to whether or not it was aware of any reported instances of confusion. Since the Board was only able to get “half of the story,” it gave limited probative value to the evidence provided for the eighth factor. This case demonstrates that the weight of each factor varies on a case-by-case basis.

In the past two posts, two examples of likelihood of confusion were examined. In both cases, the Trademark Trial and Appeal Board affirmed the decision for refusal to register under §2(d) of the Lanham Act. In the first case, and in the second case, the first two Dupont Factors weighed heavily against the applicant and weighed in favor of finding a likelihood of confusion refusal. However, in the case below, the Trademark Trial and Appeal Board dismissed the opposition and found that the two marks were not confusingly similar.

The Trademark Trial and Appeal Board dismissed a §2(d) opposition against the mark FULL OF FLAVOR FREE OF GUILT for “vegetable based food products, namely, vegetable based snack foods; meat substitutes.” Prior to the case the applicant, Outstanding Foods, disclaimed FULL OF FLAVOR. The Board found that the opposer, Yarnell Ice Cream, failed to prove likelihood of confusion with their registered mark GUILT FREE for frozen confections. Turning first to the fifth Dupont Factor, the number and nature of similar marks in use on similar goods, the opposer submitted 15 additional registrations for GUILT FREE in correlation with an array of other products to show that their mark was licensed for use on a diverse array of products. However, not only did the applicant object to the consideration of any products aside from Yarnell’s frozen confections, the Board refused to consider them because the opposition had not informed the applicant that they intended to rely on the additional registrations. Moving onto the third Dupont Factor, the similarity of established likely-to-continue trade channels, the opposer submitted evidence of a single website depicting vegetable-based snacks and frozen confections being sold under the same mark. But the Board found there was “no testimony or evidence showing what sort of commercial impact these products have made.” The opposer relied solely on the fact that parties’ goods were “snacks,” but it did not convince the Board that the involved goods were related.

In looking at the channels of trade, the Board presumed that “both parties offer vegetable based snacks or frozen confections in all channels of trade normal for those products and they are available to all classes of consumers for those products.” However, the Board found that this factor weighed very little in favor of the opposer because there was no evidence to show that the same consumers would encounter the products in close proximity, given that they are entirely different products. In this case, although the products are sold in similar trade channels, it does not mean that they would be near each other in the market. Therefore, it would be hard to find them confusingly similar. In a quick glance at the fourth Dupont Factor, the conditions under which and buyers to whom sales are made, i.e., “impulse” vs. careful, sophisticated purchasing, the Board agreed with the opposer that both parties’ goods were low-cost items and purchased with less care than expensive products. The Board then turned to the strength of the opposer’s mark, which encompasses the seventh Dupont Factor, the fame of the prior mark. The Board found that when the opposer used GUILT FREE in relation to “frozen confections or frozen dairy confections, it suggests that a person may enjoy the frozen treat [without] remorse, shame or guilt due to the calories in the frozen treat.” The applicant submitted 25 third-party registrations incorporating the word “Guilt” used in connection with food, and 13 websites using marks that invoked the “Guilt Free” commercial impression. As mentioned previously, the opposer licensed others to use the GUILT FREE mark, however, the uses were such that the Board found them “unlikely to point to Applicant as the source of the products.” Ultimately, given the commercial impression of the mark GUILT FREE, on the spectrum of distinctiveness, it would be suggestive. In considering the marks commercial strength, through the opposer’s evidence of sales of GUILT FREE frozen confections and its advertising and marketing efforts, the mark made “little, if any, commercial impact.” This commercial impact circles back to the seventh Dupont Factor. When looking at the fame of the prior (or registered) mark, it was found that there was hardly any. In many cases, the first Dupont Factor, the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression, weighs heavily in a finding of likelihood of confusion. However, not all of the factors must be considered and there is no order in which the factors must be examined. In this case, the Board found that the marks created similar commercial impression but there were obvious differences between the two that weighed against this factor. When compared in their entireties, the Board ultimately found that the Applicant’s mark was distinguishable from the opposer’s mark. In conclusion, given the narrow scope of protection afforded to suggestive marks, including the opposer’s mark GUILT FREE, the Board dismissed the opposition and found the marks different enough to avoid being confusingly similar.

In keeping with the likelihood of confusion theme, this post will detail another case where a mark was refused under §2(d) of the Lanham Act. Like the previous case, the examining attorney along with the Trademark Trial and Appeal Board both used the Dupont Factors to determine whether the marks were confusingly similar.

In a 2020 non-precedential decision, the Trademark Trial and Appeal Board affirmed the refusal for registration for the mark JUSTICE NETWORK. The Board agreed that the mark was confusingly similar to JUSTICE CENTRAL. Both parties used their marks for various forms of television programming. The Board started with the second Dupont Factor which focuses on the similarity of services provided. While both parties used their marks for various forms of programs, the opposer, and owner of the mark JUSTICE CENTRAL, used the mark for a narrower scope of programming consisting of “programs in the field of law and courtroom legal proceedings.” However, the applicant, and owner of JUSTICE NETWORK, did not specify the range of programs offered, therefore there was overlap in the parties’ services and the Board found the services to be “legally identical.” Next, the Board moved onto the first Dupont Factor which is the similarity of the marks. Ultimately, the Board found the two marks, JUSTICE CENTRAL and JUSTICE NETWORK, similar and therefore the first Dupont Factor weighed in favor of finding a likelihood of confusion. In examining the first factor, the Board started with the term justice, which is the dominant word in both marks. The Board stated, “[c]onsumers in general are inclined to focus on the first word or portion in a trademark.” Equally important, the Board concluded that the term network was highly descriptive, if not generic and therefore “has less source-identifying significance and is clearly subordinate.” In finding this, the Board discredited any differences between the two terms “network” and “central.” The opposer, and owner of the mark, JUSTICE CENTRAL, argued the seventh, eighth and ninth Dupont Factors as well. The seventh being the fame of the prior mark, the eighth being the nature and extent of any actual confusion and the ninth being concurrent use. In regard to the seventh factor, the Board found very little compelling evidence from either side and deemed both the eighth and ninth factors neutral. Turning back to the first two factors, the Board found that the marks gave the “same overall impression” and the parties’ offered “overlapping services offered in the same trade channels to the same classes of customers.” In summation, the Board sustained the opposition and affirmed the refusal for registration.

In the post on likelihood of confusion, the Dupont Factors were discussed. Though there are nine factors, not all of them are relevant or applicable in every case. The first two factors are the most important across the board. After taking them into consideration, an examining attorney will look to the remaining factors in order to support a finding of likelihood of confusion. If there is enough evidence to support such a finding, a mark may be deemed unregistrable with the USPTO under §2(d) of the Lanham Act. The following is a case that was taken before the Trademark Trial and Appeal Board on the grounds of likelihood of confusion.

In a 2020 non-precedential decision, the Trademark Trial and Appeal Board affirmed the refusal for registration for the mark HARDROK EQUIPMENT INC. for “distributorship services in the field of industrial machinery and parts therefor in the mineral and aggregate industries” (EQUIPMENT INC. disclaimed). The Board found confusion to be likely with the previously registered mark HARDROCK for “rock drills, drill bits, and other drilling equipment.” Turning to the first factor in the Dupont Factors, the Board found that the two marks are “quite similar in appearance, sound, and connotation and commercial impression when considered in their entireties.” In that manner, the first factor was satisfied. The second factor, relating to the relatedness of the goods and services, is examined based on what was described in the registration and application. The Board concluded that even though the applicant and the cited registered mark owner did not have identical goods, “they substantially overlap, which weighs in favor of finding a likelihood of confusion.” Therefore, the second factor was satisfied. The applicant then cited the fourth factor: The conditions under which and buyers to whom sales are made, i.e., “impulse” vs. careful, sophisticated purchasing. In this case, the fourth factor supported a finding that confusion was not likely, however, the first two factors are the most heavily considered. Simply because other factors may be relevant or applicable, does not mean they outweigh the first two. In summation, the Board found that “[s]ophistication of buyers and purchaser care are relevant considerations but are not controlling on this factual record.” So, the Board affirmed the §2(d) refusal for registration.

As discussed in a much earlier post, it is important to select a strong trademark. The purpose of a trademark is to distinguish an owner’s goods and services from another’s goods or services. Since the purpose of a trademark is to act as a source indicator, it is important that two trademarks are not so similar, that the consuming public believes them to be related, or confuses them, this is known as likelihood of confusion. Under §2(d) of the Lanham Act, marks that are found to be confusingly similar are unregistrable with the USPTO.

When determining likelihood of confusion, the key factors an examining attorney relies on are known as the Dupont Factors. The two most important factors to consider are: (1) The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. (2) The relatedness of the goods or services as described in the application and registration(s).  When looking at these two factors, the order in which they are considered is important, because the more similar the marks are, the less related the goods or services need to be in order to support a finding of likelihood of confusion.  The following are the remaining seven factors that should be considered if applicable and relevant: (3) The similarity 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 number and nature of similar marks in use on similar goods. (6) The existence of a valid consent agreement between the applicant and the owner of the previously registered mark. (7) Fame of the prior mark. (8) Nature and extent of any actual confusion. (9) Concurrent use without evidence of actual confusion: length of time and conditions. It is important to note that not all of these factors will be applicable in every case.

When determining likelihood of confusion, the standard is confusingly similar. Two marks need not be identical to support a finding of likelihood of confusion. This means that a new mark may be confusingly similar to a previously registered mark even if it is not identical. There is no guarantee that changing or removing portions of a new mark will make it sufficiently distinguishable and therefore registrable with the USPTO.