By Samantha Peaslee
One of the most common reasons that the trademark examiners at the United States Patent and Trademark Office refuse a mark registration is that the new trademark (applicant) is likely to cause consumer confusion with another already-registered mark (registrant). This standard is also applied in a potential infringement action, so owners of great names and logos are wise to keep this in mind when designing the next viral brand.
For the purposes of this blog, we are going to make up some trademarks to use as examples. Applicant, or Company A, wants to trademark the “Tart & Fluffy” as a product name for its line of signature mousse cakes which it sells in its restaurants across the United States. Registrant, or Company B, has the registered trademark of “Tarty Fluff” for its bakeries, which sell a variety of cakes, cookies, and such, as well as catering services for the same. Both trademarks are what we call “Standard Characters” – just the plain words as written without design or embellishment. Applicant wants to get a trademark for the Tart & Fluffy. What will the trademark examiner say?
The du Pont Factors
Trademark law is not a precise science. The “likelihood of confusion” standard is inherently subjective and attempting to determine how large crowds of people will perceive of two items, with each set of facts being considered on a case-by-case basis. It is based in the trademark law, 15 U.S.C. 1052(d): “No trademark by which the goods of the applicant may be distinguished from the good sof others shall be refused registration on the principal register on account of its nature unless it…(d) consists of or comprises a mark which so resembles a mark registered in the Patent Office or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when applied to the goods of the applicant to cause confusion, or to cause mistake, or to deceive.” From this legal standard, we have the shorter “likelihood of confusion” phrase.
In 1973, the U.S. Court of Customs and Patent Appeals heard a case from the trademark office’s refusal to register E.I. Du Pont DeNemours & Co.’s mark “RALLY”, which was used on “a combination polishing, glazing and cleaning agent for use on automobiles”. The trademark examiner had stated that E.I. Du Pont’s “RALLY” was likely to cause confusion with the registered mark “RALLY”, which was used on “an all-purpose detergent.” In its analysis, the du Pont court determined that thirteen factors should be considered in likelihood of confusion analyses. Not all of these factors would apply in each case, but if they were available, they should be considered. These are now referred to as the “du Pont factors” and any likelihood of confusion analysis will consider at least two of them.
The du Pont factors are:
- The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression;
- The similarity or dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use;
- 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;
- The fame of the prior mark (sales, advertising, and length of use);
- The number and nature of similar marks in use on similar goods;
- The nature and extent of any actual confusion;
- The length of time during and conditions under which there has been concurrent use without evidence of actual confusion;
- The variety of goods on which a mark is or is not used (House mark, family mark, product mark);
- The market interface between applicant and the owner of a prior mark, such as: (a) a mere ‘consent’ to register or use; (b) agreement provisions designed to preclude confusion, i.e. limitations on continued use of the marks by each party; (c) assignment of mark, application, registration, and good will of the related business; and (d) laches and estoppel attributable to owner of prior mark and indicative of lack of confusion;
- The extent to which applicant has a right to exclude others from use of its mark on its goods;
- The extent of potential confusion, i.e., whether de minimis or substantial;
- Any other established fact probative of the effect of use.
In re E.I. Du Pont de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973)
Later cases have further developed each of the above factors. We can see how they may apply to our example above (with the caveat that different attorneys may feel differently about them). Do remember that we are breaking a rule for the purpose of this post – typically, the trademark examiner can only consider the information available in the application. We are going to expand upon that for purposes of getting a better feel for these factors.
Similarity or Dissimilarity of Marks
This first factor is considered in every likelihood of confusion analysis without fail. Why? Because if the marks are not at least somewhat similar, we are not having a likelihood of confusion argument at all.
In assessing this first factor, the trademark examiner considers the similarity or dissimilarity of marks in their entireties as to (1) appearance; (2) sound; (3) connotation; and (4) commercial impression. Many businesses will only consider the first part – alleging that the difference between “A” and “The” will differentiate the mark, or singular and plural. This narrow approach will not get a mark through the application process.
In considering appearance and sound of a mark, the trademark examiners and courts heavily weight marks that start the same way in favor of likelihood of confusion. They’ve done this with “CENTURY 21” and “CENTURY LIFE OF AMERICA” in Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874. Similarly, the trademark examiners will discount descriptive portions of a mark, such as “PEPPER SAUCE” in “CHANTICO PEPPER SAUCE” used on a hot sauce. The trademark examiners will also emphasize the more unique or distinctive portions of a mark, particularly since those are the portions that are more likely to stick out in the mind of a consumer.
With our example, we have the “TART & FLUFFY” compared to the “TARTY FLUFF”. In appearance, they look pretty similar. They have all the same letters, with just the “y” moved over, and the first has an ampersand in it. If someone were reading quickly, they’d be likely to confuse one for the other. The ampersand is not unique or distinctive, either, so it would be basically ignored by the trademark office. By sound, the two marks are a little easier to distinguish, but the most distinctive elements – the “TART” and the “FLUFF” both sound very similar and in the same order. This will make it very difficult for Company A to succeed in its application.
Connotation can be interesting for words or phrases with multiple meanings, or for logos that create a different impression than their literal appearance. For example, “BLUE MAN” when part of “BLUE MAN GROUP” creates the connotation of performers who are blue, but “BLUEMAN” when used on cigarettes or tobacco were found not to conjure an image of blue-colored people. Blue Man Prods. Inc. v. Tarmann, 75 U.S.P.Q.2d 1811, 1820-21 (T.T.A.B. 2005). Alternatively, “COACH” in the context of luggage raises the image of a stagecoach, while “COACH” in the context of tutoring creates the connotation of a person who helps prepare a student for an exam. Coach Servs. v. Triumph Learning LLC, 668 F.3d 1356. The more common the word is that is part of the mark, the more likely that different connotations will weigh against similarity.
Commercial impression is the way that the mark is presented to a consumer. Think of where and how the mark is on a package or how it is referred to in a commercial or jingle. Unlike with appearance and sound, this allows the examiner to stop comparing the marks “side-by-side” and instead compare how the two marks are presented to consumers. Importantly, the commercial impression can be the most important factor, as that will be the way the marks interact with consumers. When Century Life of America shortened their name to “Century” in advertising, that increased the likelihood that it would create a confusing commercial impression with the pre-existing Century 21, even though they were applying for the full name. The casual use of the shortened name was the actual use of the mark in the marketplace.
The “TART & FLUFFY” mark is used exclusively on the menus of Company A’s restaurants across the United States. It is only used on that restaurant’s special mousse cakes, which have an iconic look and a little white chocolate label that also says “TART & FLUFFY” when served. The mark is seen in Company A’s national commercials as part of their restaurant’s advertising campaign. It is not the name of the restaurant itself or on any other food product they serve. The “TARTY FLUFF”, on the other hand, is the name on the bakery itself. It is in large letters on the front of each bakery location in stylized font, as well as on each and every product they sell, their staff clothing, and any other merchandise. The “TARTY FLUFF” doesn’t have commercials, but does have a national website and local promotions in each of their bakery locations.
So the commercial impression of the two marks are pretty different, but the marks are near identical in sound and appearance.
Similarity or Dissimilarity and Nature of Goods or Services
The second factor is also considered in virtually every likelihood of confusion analysis. The less similar the goods and services are, the less likely consumers will think they originate from a similar source. However, many businesses mistake identical goods and services with similar goods and services, to their detriment in applying. The first two factors interact with each other on a sort of sliding scale – the more similar the goods and services on which the marks are used, the less similar they need to be to cause confusion, and vice versa.
In general, this factor will weigh in favor of likelihood of confusion if the goods/services are related in some manner or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that they come from the same source. For example, if one might buy nail polish in a hair salon commonly, that might give rise to an implication that they could come from the same source. However, the more different the services, the more similarity that is required between them to create confusion.
When we look at goods and services in a trademark context, the trademark examiner will first look at their class and then the relationships between the marketing of those items. In 1973, the U.S. adopted an international standard of classifications under the Nice Agreement and has used it since. The Nice Agreement includes fifty broad classes of goods and services. When someone applies for a trademark, they must identify the broad class, but then also the more specific description of the goods and services for their products within that class.
Here, the class of goods for our two marks is somewhat the same. “TART & FLUFFY” is used on cakes only. This falls within International Class 30, which is “staple foods” (compared to meats and processed foods in Class 29). “TARTY FLUFF” is registered for bakeries, which falls within International Class 43 (Restaurant and Hotel Services), retail services, which is within International Class 35 (Advertising and Business Services), and International Class 30 for all of their baked goods. They share class 30, which means they are in the same class of goods and services. Additionally, their goods and services are actually very similar. Even if TARTY FLUFF were not in Class 30, the fact that both focus on desserts and that the average consumer may reasonably believe that a cake came from another bakery, even if served in a restaurant, makes these goods and services confusingly similar.
Since the goods and services are very similar, the marks don’t have to be quite as similar under the first factor to reject the application for the “TART & FLUFFY”. So the fact that the commercial impression was different is unlikely to be enough to help Company A in this situation.
Similarity or Dissimilarity of Trade Channels and Impulse v. Careful Purchasers
In a global, highly web-based world, it often feels like all of our trade channels have collapsed into one. In trademark analysis, the differences in where and how we buy our goods and services are highlighted. Where do each of the marks advertise? How do they get the goods and/or services to the consumer? Who do they offer their services to? As the first two factors are often compared to each other, the third and fourth factors are often discussed together.
Let’s look first at the trade channels. Think, for example, of someone who only sells their product (lets call it a watch) on a major online marketplace and another producer who only sells their very similar watch in their brick and mortar store and has no online presence. Those would be dissimilar trade channels. If the brick and mortar store has an online store, even if it doesn’t use marketplaces, it starts to look more similar – internet searches for the watch may bring up both items, possibly side by side. Then if they are both in the same online marketplaces, they are in the same trade channels, increasing the likelihood that a consumer is confused as to the origin of the good when they search for a “watch” and both come up with similar marks. Notably, the trademark office is not supposed to only consider identical channels of trade (stores, agents, marketplaces, malls, brokers) as similar, but also the same type. So two separate websites are still going to be considered very similar channels of trade. Two different supermarkets are considered very similar channels of trade.
The fourth factor looks at whether the goods or services in question are those that are purchased on impulse (for example, as you are going out the checkout line at the supermarket) or after significant research and careful decision-making (such as a car or a house). As with many of the other factors, this factor is considered on a spectrum. The more impulsive the average purchase of a product may be, the more likely that a consumer would be confused as to the source. The more research that is put into the purchase, the less likely that a consumer would mistakenly believe that two different products come from the same source.
Going back to the watch, if the watch is a high-end brand that costs a five-digit figure, that is more likely to be a careful purchase than a $20.00 watch. Someone could be walking through a store aisle, see $20 watches, remember theirs broke and grab one without much additional research. The average consumer is unlikely to do the same with a $10,000 watch.
It should be noted that if an application or registration does not clarify a channel of trade, the goods or services will be assumed to travel in all normal channels of trade and consumers will not be assumed to do research on the purchase, so these factors will be considered to weigh against application.
With our “TART & FLUFFY” application, the channels of trade would actually weigh in favor of Company A getting its application. The “TART & FLUFFY” is only sold in Company A’s restaurants. “TARTY FLUFF” is a bakery and only sells its own products. The two have no intersection in channels of trade. However, the impulse vs careful purchase factor weighs against registration – people are likely to order the “TART & FLUFFY” on impulse, after a big meal. They are unlikely to ask questions regarding the origin of the “TART & FLUFFY” or if it is made in house. People may also visit the “TARTY FLUFF” on impulse – the window displays are designed to tempt passers-by and people will frequently walk in without planning to have visited. So the two factors likely cancel each other out.
Fame of the Prior Mark
With the fifth factor, the fame of the prior mark, we come to our first factor that is not widely applicable in the trademark infringement conversation. The first four factors are often worth considering. The fifth factor just may not be applicable. However, if it is applicable, it can be an immediate dealbreaker for the applicant’s registration – famous marks “enjoy a wide latitude of legal protection.” Coach Servs. v. Triumph Learning LLC, 668 F.3d 1356. The more famous a mark, the more likely a consumer is to believe that this new mark is from that same major company – and the less related the goods and services have to be.
Think of a very famous media and entertainment company with some very famous marks on their movie and television franchises. You want to start selling a lunchbox with a similar name as one of those marks. Lunchboxes have nothing to do with what they do – but it is reasonable that they would license their brands onto lunchboxes so that fans would purchase them, making your lunchbox brand likely to cause confusion. This is extremely unlikely with a less famous mark – but we all know that famous marks and brands will take these multi-branding actions and so confusion becomes more likely.
Typically, a famous mark is one with extensive public recognition and renown. Coach Servs. v. Triumph Learning LLC, 668 F.3d 1356. That being said, a mark doesn’t have to be “universally” famous for this element to be considered. Fame for purposes of this factor varies along a spectrum from very famous (garnering significant protection) to very weak (with almost negligible additional protection). Sometimes, a trademark registrant or applicant will use survey information to show levels of association in a consumer’s mind between a term and a company. For example, in the Century 21 case, a survey was used to show a high association in consumers’ minds between the word “Century” with the company “Century 21”. Century 21 was then found by the court to be a “famous” mark, which weighed in favor of denying the later mark in similar goods and services. Other times, they may provide evidence of sales revenue, market share, significant advertising campaigns, variety of goods with the mark in question, or other considerations. Coach Servs. v. Triumph Learning LLC, 668 F.3d 1356.
If a competing mark is found to be famous, the applicant mark will have a much harder time overcoming a likelihood of confusion argument than otherwise.
Here, “TARTY FLUFF” is our prior, registered mark. Company B has been using “TARTY FLUFF” on its bakeries for fifteen years. It has locations in twenty-five states and a national revenue of $300 million in the previous year. In those states, Company B has conducted surveys and shows a medium-high association in consumer’s minds between the words “tart,” “fluff,” and its company. It may be found to be a “famous” mark, which would make it even more difficult for the “TART & FLUFFY” to succeed in its application.
Number and Nature of Similar Marks
The sixth factor comes in play most often with very common words, particularly in certain industries. The most common way to interpret this factor is that if there are numerous other marks by other owners that are similar, then a consumer is less likely to think that this later mark could be confused with an earlier one. In other words, if “customers have become so conditioned by a plethora of such similar marks that customers have been educated to distinguish between different marks on the bases of minute distinctions,” then this factor will weigh in favor of granting the applicant their marks. In re Davia. The words “First” or “National” or “United” with banks is a common one – just because multiple banks use one of those words doesn’t mean the average consumer will think they’re related, as this is an exceptionally common word used in naming banks.
Neither “FLUFF” nor its variations are common enough in the cakes business to have created a large number of similar marks (not like words like “sprinkles” or “frosting” or their variations). “TART” however, has a number of similar marks, because of its link with pies and tarts. However, this is probably not enough for customers to have become conditioned to look for other distinctions between the marks.
Nature and Extent of Actual Confusion & Concurrent Use
At the level of applying for a trademark application, the nature and extent of actual confusion comes into play less often than in an infringement case in a district court. This factor is fairly self-explanatory – have any consumers actually thought that the registrant was the source of applicant’s goods and services? An important thing to remember is that, since the test is likelihood of confusion, lack of actual confusion is not dispositive to grant registration, but will only be considered along with the other factors.
Coinciding with the seventh factor is the eighth – the length of time during and conditions of which there has been concurrent use without evidence of actual confusion. If there is no actual confusion, but the second mark has only been sold in commerce for a month, the seventh factor cannot really be considered as a useful indicator.
Here, let’s say that the “TART & FLUFFY” national commercial campaign began three months ago. If “TARTY FLUFF” had been receiving questions as to whether they were working with Company A, that would be evidence of actual confusion. If “TARTY FLUFF” had been receiving phone calls ordering the “TART & FLUFFY”, that would be evidence of actual confusion. Potentially, if “TARTY FLUFF” sales had gone down in the areas with both Company A and Company B since the commercial campaign started, Company B could use that as evidence to support confusion, although that would be weaker. Although Company B likely does not need this, the seventh and eighth factors would weigh against registration of “TART & FLUFFY”.
Variety of Use
The ninth factor considers how many different kinds of goods and services the marks are used on. This is sometimes phrased as whether the mark is a “house mark”. For example, the mark is the primary company mark that is used on all products compared to whether it is only used on one line of products or a very specific product. House marks are going to be more likely to result in a finding of potential confusion, as they are applied to a wider variety of goods and services. Specific or product marks, on the other hand, are less likely to create confusion because they have more limited applicability.
Going back to our example, “TARTY FLUFF” is a house mark. It is used on everything that Company B does and sells, which is also indicated by its multiple classes of goods and services. That makes it more likely that it would expand into selling cakes to other restaurants, like Company A. That weighs against registering “TART & FLUFFY”.
Market Interface between Applicant and Prior Owner, Applicant’s Right to Exclude Others from Use of Mark, De Minimis vs Substantial Confusion, and Other
These final factors are rarely used. The market interface factor considers issues like prior or potential licensing. The right to exclude factor considers issues like the age of the applicant’s mark or its access in different markets. De minimis vs substantial confusion considers whether, if there is confusion, how extensive the confusion actually would be. And the “other” factor is the fallback. These factors are only applicable in very specific circumstances – if you think they apply to your mark, you should consult an attorney.
Conclusion
At the end of the day, likelihood of confusion is a subjective and imprecise science. It is based on the judgment of individuals, attempting to determine what large groups of people will and will not think. It is made harder in that the owner of each mark is biased in their feelings regarding what people will and will not think of their mark. At the end of the day, though, if there is a close call on likelihood of confusion, the later mark will lose and the earlier one will win.
In our example, “TART & FLUFFY” is not likely to be granted its application and it will need to reconsider its branding. However, you saw that this was not cut and dry and that there was room for other arguments to be made. At the end of the day, a perfectly clear example of a close call mark is pretty rare.
What should this mean to a potential trademark applicant? Looking to see if “your mark is available” on the USPTO’s search site is not sufficient to determine whether you will actually get your registration. It is not about whether your precise phrasing is available – it is whether this complex myriad of factors favors registering your mark for the benefit of consumers out there to understand the source of their goods and be able to make informed decisions as a result. A good marketing team and early legal advice can be crucial to making positive decisions – and making it more likely that you avoid having to do a full rebrand after having fallen in love with your mark or having spent significant funds on developing and marketing it. An attorney’s opinion and a marketer’s opinion is not perfect – again, it is highly subjective – but can better help identify some of those risks early.
If you’re interested in learning more about the trademark process, check out Module 6 of our series Own It!, which follows invented entrepreneur Cassie Carter on her journey opening a cupcake shop.
