Trademark Litigation in the TTAB: The Likelihood of Confusion Test
Trademark litigation can be immensely costly and resource-consuming so it is critical to first evaluate the scope of the case and attempt to at least make an educated guess as to the chances of success. There are different reasons why one might commence a trademark opposition or cancellation proceeding but its principle objective, irrespective of the proceeding, is to stop the USPTO from granting the trademark in question, registration.
In this article, we are going to consider one of the foremost reasons for initiating a trademark litigation proceeding, which is the Likelihood of Confusion claim established by §2(d) of the Trademark Act.
Understanding Likelihood of Confusion
The central idea behind the Likelihood of Confusion argument is that a junior trademark which is so similar to the senior trademark such that a consumer would confuse the origin of the good/service to which the junior trademark is attached should not be granted trademark registration. Indeed, according to the Trademark Manual of Examining Procedure;
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 §1207.03concerning §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.” TMEP 1207.01
In a Trademark Opposition proceeding resting on the likelihood of confusion argument, it is incumbent on the plaintiff to establish that likelihood of confusion is a viable complaint.
However, before the substantive, likelihood of confusion argument, is developed the plaintiff must first meet certain requirements.
Remember, one can only initiate a trademark litigation proceeding in the TTAB if that individual/entity can demonstrate that it has a real interest in the proceeding that the registration of the new trademark would damage the Opposer. What would “Damage” consist of? Well, in a Likelihood of Confusion proceeding, the Opposer must show that either this newly registered mark is somehow preventing the Opposer from registering a new mark (which it would otherwise be entitled to register) or that the new mark’s existence in the marketplace would (due to consumer confusion) result in financial loss.
Next, it is incumbent on the Opposer to demonstrate, by a preponderance of the evidence, that his trademark does, in fact, have priority over the disputed trademark. There are several ways such priority rights may be established:
- Marshaling forth evidence of a preexisting registration in the USPTO
- Proof of Actual Use of the Trademark in Commerce (along with corresponding dates)
- Use analogous to trademark use
Substantive Argument for Likelihood of Confusion
Remember undergirding all of Trademark law the imperative to ensure that newer-moving companies are not illicitly siphoning off sales, due to trademark-driven consumer confusion, from first-acting companies. How does the TTAB decide if there is, in fact, a likelihood of consumer confusion under Sec. 2(d)? Well, it looks to the famous Du Pont case (In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973)) which have given us the Dupont Factors Test, governed by the balancing of 13 factors:
(1) The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.
(2) 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. Page 2 476 F.2d 1357, *1360; 1973 CCPA LEXIS 363, **3; 177 U.S.P.Q. (BNA) 563
(3) The similarity or dissimilarity 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 fame of the prior mark (sales, advertising, length of use).
(6) The number and nature of similar marks in use on similar goods.
(7) The nature and extent of any actual confusion.
(8) The length of time during and conditions under which there has been concurrent use without evidence of actual confusion.
(9) The variety of goods on which a mark is or is not [**7] used (house mark, “family” mark, product mark).
(10) The market interface between applicant and the owner of a prior mark: (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. (d) laches and estoppel attributable to owner of prior mark and indicative of lack of confusion.
(11) The extent to which applicant has a right to exclude others from use of its mark on its goods.
(12) The extent of potential confusion, i.e., whether de minimis or substantial.
(13) Any other established fact probative of the effect of use.
What is challenging about this test is that very often, only some of these markers are relevant and it is not always obvious which of these points deserve more or less weight. However, if we consider these factors in their totality, the test represents the meta-goal of ensuring a buyer will not experience confusion as to the source of the product bearing the mark. The more similar the prospective mark is to the original, the greater the likelihood of confusion and therefore the greater the chance trademark infringement has occurred. Critically, while each factor is important, they do not all need to satisfied for a judge to find that consumer confusion has taken place.
Now let’s return to your Trademark Litigation proceeding. How does the trademark you take issue with align with these (some or all) of the Dupont Facotors? This is a discussion you should have with a trademark attorney in depth before you begin the suit.
Have a question? We want to know. Contact a Trademark Lawyer today.