Does it matter whether anyone has actually been confused?

Business owners usually reach for this argument first. It feels like the best evidence: if nobody has been confused, confusion must be unlikely. The Board rarely sees it that way, and a response built on it puts its weight on the weakest point.

When actual confusion does exist — misdirected orders, payments, or reviews — it is evidence the other side will use. Keep a record of it either way.

The seventh du Pont factor is “the nature and extent of any actual confusion.” The eighth is closely related: “the length of time during and conditions under which there has been concurrent use without evidence of actual confusion.” In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973). The two are usually argued together.

The relevant test is likelihood of confusion, not actual confusion. Showing actual confusion is unnecessary. In re Detroit Athletic Co., 903 F.3d 1297, 1309 (Fed. Cir. 2018); U.S. Pat. & Trademark Off., Trademark Manual of Examining Procedure § 1207.01(d)(ii) (May 2026) [hereinafter TMEP].

Absence of confusion is a different question. It means something only if the two marks were used in the same market, for long enough, with enough overlap that confusion would have surfaced if it were likely.

A lack of evidence of actual confusion “carries little weight, … especially in an ex parte context.” In re Majestic Distilling Co., 315 F.3d 1311 (Fed. Cir. 2003). In that case, the applicant’s uncorroborated statements of no known instances of confusion were of little evidentiary value. Id.

The factor still has to be considered when there is evidence on it. In 2019 the Federal Circuit vacated a Board decision because the Board did not address the applicant’s evidence of long concurrent use without confusion under the eighth factor. In re Guild Mortg. Co., 912 F.3d 1376 (Fed. Cir. 2019). Considering the evidence is not the same as crediting it, as the library decision below shows.

The difference between the two settings is large.

• Ex parte. The registrant is not a party. Nobody can test the applicant’s claim of no confusion or say what the registrant has seen. That is why the Board gives it little weight. The examining attorney rarely has evidence of actual confusion, and does not need any.
• Inter partes. In an opposition or cancellation, both parties can take discovery and testimony. Evidence of actual confusion, or of long side-by-side use in the same market without it, can be tested and can carry more weight. An intent-to-use application that has barely been used gives confusion no chance to occur, so its absence proves little.

• Documented instances: misdirected orders, payments, emails, calls, or reviews, with dates and details.
• Evidence of real overlap in the market: the same customers, the same region, the same period.
• A properly designed survey. A survey that tests the wrong mark or the wrong buyers gets little weight.

• Leading an ex parte response with “no confusion in X years.”
• Offering the owner’s own statement, uncorroborated, as proof.
• Ignoring whether the two businesses ever shared a market.

10 of the 38 records in this library that code du Pont factors carry a finding on factor 7 (library as of 2026-09-19; a curated collection, not a random sample).

The finding is neutral in all 10. None is coded as weighing for or against confusion, and none as driving the result. One record (In re I-Coat Co.) also carries a second entry under this factor whose note describes the overall balance of factors, not actual confusion; that entry is a coding defect and is not counted as a factor 7 finding. None of the 10 records an actual instance of confusion.

Years of coexistence, no weight. FINIGARD was refused for anti-corrosion and electroplating chemicals over INFINIGUARD for anti-corrosion coatings. The claim of 25 years without confusion carried no weight, because there was no evidence of U.S. use and the registrant could not be heard in the one-sided proceeding.

No opportunity for confusion. In the NATURE MADE opposition, there was no actual confusion. But the intent-to-use goods had essentially not been sold, so there had been no reasonable opportunity for confusion. The Board sustained the opposition.

Forty years, still refused. In the Board’s 2020 decision on GUILD MORTGAGE COMPANY for financial services, the Board refused registration over GUILD INVESTMENT MANAGEMENT. More than forty years of side-by-side use without proven marketplace overlap was not enough to avoid likely confusion.

Start keeping a log now if you share a name with another business. Record every misdirected call, email, order or review, with the date and what was said. That record is useful whichever way it points. You can do this yourself.

If you have a refusal, do not build the response on the absence of confusion. Use it, if at all, as support for arguments on the marks, the goods, or a consent agreement with the registrant.

If you are in an opposition or a dispute, or you have real evidence of confusion, a lawyer earns the fee in deciding what that evidence proves and how to put it in the record. Valet Law, PLLC can review what you have and tell you what it is worth.

Attorney review is provided by Valet Law, PLLC, a law firm separate from Trademark Valet, LLC. Keep confidential facts out of public tools. Your first message to Valet Law should identify the parties and the general issue only. Wait until Valet Law confirms it can discuss the matter before sending confidential details.