Do years of side-by-side use without confusion help?

This is usually the first argument an applicant wants to make: “We have used this name for twenty years and nobody has ever mixed us up.” It feels decisive. The law treats it as evidence, and its weight depends on the conditions of the use.

The test under Section 2(d) is whether confusion is likely, not whether it has happened. It is unnecessary to show actual confusion to establish likelihood of confusion. U.S. Pat. & Trademark Off., Trademark Manual of Examining Procedure § 1207.01(d)(ii) (May 2026) [hereinafter TMEP]. So the absence of confusion is not, by itself, an answer. It can still tip a close case when the record shows a real opportunity for confusion that never produced any.

The eighth factor in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973), is “the length of time during and conditions under which there has been concurrent use without evidence of actual confusion.” It is the mirror image of factor 7, which looks at any actual confusion that did occur.

The Board must consider it when the evidence is in the record. In In re Guild Mortgage Co., 912 F.3d 1376 (Fed. Cir. 2019), the Federal Circuit vacated a Board decision because the Board did not address the applicant’s evidence and argument on this factor. The court did not say the evidence won. It said the Board had to weigh it.

Conditions matter more than years. On remand, the Board found the factor neutral. The record did not show geographic overlap or that the same consumers had been exposed to both marks. In re Guild Mortg. Co., 2020 U.S.P.Q.2d (BNA) 10279 (T.T.A.B. 2020).

The ex parte limit. In an application, the registrant is not heard. The Board has said this constraint “necessarily limits the potential probative value” of evidence on this factor. Id. The Federal Circuit has also held that an applicant’s uncorroborated statements that it knows of no confusion are of little evidentiary value. In re Majestic Distilling Co., 315 F.3d 1311 (Fed. Cir. 2003).

“Concurrent use” here is ordinary English. It is not the same as a concurrent use registration, which is a term of art for a registration limited by geography. See TMEP § 1207.04. Factor 8 does not require that proceeding.

What evidence moves it. Proof that both marks were sold in the same territory, through the same channels, to the same kind of buyer, in meaningful volume, for a meaningful time. Sales and advertising figures in the overlap area. Evidence that the two businesses were in fact encountered side by side. A declaration that says only “we are not aware of any confusion” does little.

Common mistakes. Counting years without showing overlap. Relying on the applicant’s own say-so. Treating the absence of confusion as though it answered the question of likely confusion. And overlooking the forum: in an opposition or cancellation, both owners are parties and the record can test the point, so the same history can carry more weight there than in an application.

5 of the 38 records in this library that code du Pont factors carry a factor 8 code (library as of 2026-09-19; a curated collection, not a random sample). In two of the five, the coded note addresses a different point (the scope of the registrant’s goods in one, buyer sophistication in the other), so those two are coding defects and are not treated here as factor 8 findings. The other three, discussed below, address side-by-side use. All three are ex parte appeals from refusals. The finding is neutral in all three. None is coded as weighing for or against confusion, and none as driving the result.

The Guild Mortgage remand is the clearest example in the library. GUILD MORTGAGE COMPANY was refused over GUILD INVESTMENT MANAGEMENT for related financial services. More than forty years of concurrent use 126 miles apart was not backed by evidence of meaningful marketplace overlap, so the absence of reported confusion carried little weight in the ex parte posture.

In In re Jason Jimenez, the Board reversed a refusal of GASPER ROOFING over JASPER CONTRACTORS, but not because of this factor. The Board found factor 8 neutral, noting that an examining attorney bears no burden to produce evidence of an absence of confusion in an ex parte appeal. The applicant won on the differences between the marks and on careful purchasing.

In In re Coventya, a non-precedential decision, the factor was neutral because no evidence showed how long or under what conditions FINIGARD and INFINIGUARD had coexisted in the U.S. market.

If you plan to rely on years of coexistence, build the record around the conditions, not the calendar. Map where both marks have been sold, to whom, through which channels, and in what volume. Gather dated advertising and sales records for the overlap. If the other owner will say it has seen no confusion, that statement usually belongs in a consent agreement, where it carries more weight. The guide on agreements between the two owners covers that route.

Collecting your own sales and advertising history is work you can do yourself. Deciding whether the evidence is strong enough to argue, and how to present it in a response or at the Board, is where a lawyer earns the fee.

If you have a refusal and a long history of coexistence, Valet Law, PLLC can review the record and tell you whether the history is worth arguing.

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.