How Is Likelihood of Confusion Decided for Trademarks?

Two trademarks conflict when consumers are likely to believe that goods sold under one come from, or are connected with, the owner of the other. That is the likelihood of confusion trademark test, and it decides more trademark questions than any other rule: whether the USPTO will register your mark over an earlier one, whether a competitor can stop you, and whether you can stop them. The test does not require identical marks or identical goods, which is why so many self-searches come back clean and so many applications still draw a refusal. Our trademark clearance and availability opinion service applies this test to every candidate name before filing, and the factors below are the ones that carry the analysis.

The likelihood of confusion trademark test: the du Pont factors

The USPTO and the Trademark Trial and Appeal Board apply the factors from the Federal Circuit’s du Pont decision. Federal courts in infringement cases use closely related lists under different names. The factors that come up in nearly every case are:

• The similarity of the marks in appearance, sound, meaning and overall commercial impression.
• The relatedness of the goods or services as described in the application and registration.
• The similarity of trade channels and the classes of purchasers.
• The conditions of purchase, including whether buyers are careful and sophisticated or buying on impulse.
• The fame or strength of the earlier mark.
• The number and nature of similar marks already in use on similar goods.
• Any evidence of actual confusion, or of a long period of coexistence without it.
• Any agreement between the parties, such as a consent or coexistence agreement.

No single factor controls, and not every factor applies to every case. In practice the first two carry most of the weight, and an examining attorney who finds similar marks on related goods will refuse the application unless something else in the record pushes the other way.

Similarity of the marks: sight, sound and meaning

Marks are compared in their entireties, but the comparison gives more weight to the dominant portion. In a mark made of a distinctive word and a descriptive one, the distinctive word dominates. In a mark combining words and a design, the words usually dominate because that is what consumers say when they ask for the product. Adding a house mark or a descriptive term to someone else’s mark does not avoid confusion; it often increases it, because consumers assume a product line extension.

Sound matters as much as spelling. Marks that look different but are pronounced the same are treated as similar. Meaning matters too: a foreign word is compared against its English translation when ordinary American purchasers familiar with that language would translate it. The question is always the overall impression on a consumer who sees the marks at different times and retains a general rather than exact memory of them.

Relatedness of the goods and services

The goods do not have to compete. They have to be related closely enough that a consumer seeing similar marks on both would assume a common source. Coffee and coffee shop services are related. Software and the consulting services that implement it are related. Clothing and retail store services featuring clothing are related. Examining attorneys prove relatedness with third-party registrations that cover both kinds of goods under a single mark and with web pages showing companies that sell both.

The comparison uses the goods as written in the application and the registration, not the goods as actually sold. If the registration says “clothing” with no limitation, it is presumed to cover all clothing sold in all normal channels to all usual buyers, and your evidence that the registrant only sells luxury coats will not help. This is why the identification of goods in your own application deserves careful drafting; a broad identification invites conflicts a narrow one would avoid.

Factors that shift the balance

Strength cuts both ways. A famous or coined earlier mark gets a wide berth, and even distant goods can be refused. A weak mark in a crowded field gets a narrow one, and evidence that many third parties use the same term for similar goods can persuade an examiner that consumers distinguish among them by small differences. Our post on what makes a trademark strong explains where that strength comes from.

Sophisticated purchasers making expensive, considered decisions are less likely to be confused than shoppers grabbing an inexpensive item from a shelf. A documented history of both marks coexisting for years with no reported confusion helps, though the USPTO gives it less weight than courts do because the record in an application is thin. A well-drafted consent agreement from the earlier owner, explaining why confusion is unlikely and what the parties will do to avoid it, is often decisive.

Applying the test before you file

The point of clearance is to run this analysis before an examining attorney does. For each mark a search turns up, ask whether the dominant portions are similar, whether the goods are the kind a single company sells together, and how strong the earlier mark is. A mark that fails on the first two factors is a high-risk name, and no amount of argument later will make it safe.

If you file anyway and the examiner cites the earlier mark, the analysis shifts from prediction to persuasion; our post on responding to a likelihood of confusion refusal explains what evidence a trademark office action response needs. And if the conflict surfaces after registration, in an opposition or an infringement claim, the same factors are argued before the Board or a court through our trademark enforcement and TTAB proceedings practice. Running the test early is cheaper at every later stage.

If a search has turned up a similar mark and you want a clear view of the risk before you file, a consultation with Capitol Law Partners can give you one. Schedule a consultation.

This article is for informational purposes only and does not constitute legal advice. No attorney-client relationship is formed by this communication.

Attorney Cagatay Ersoy. Practical strategy for founders, investors, and growing companies.

Need help with this topic? See our trademark search and likelihood of confusion analysis page or schedule a consultation.