Does a famous mark get more room?

When fame is proved, it can carry a case. A famous mark can block a similar mark on goods that would otherwise be too far apart.

The practical point for most applicants is narrower. If you are answering a refusal, the registrant’s lack of fame does not help you. If you are choosing a name that echoes a household brand, fame is the reason to choose another.

The fifth du Pont factor is “the fame of the prior mark (sales, advertising, length of use).” In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973); U.S. Pat. & Trademark Off., Trademark Manual of Examining Procedure § 1207.01(d)(ix) (May 2026) [hereinafter TMEP].

The question is how strongly the relevant buyers recognize the earlier mark. When present, fame is “a dominant factor in the likelihood of confusion analysis … independent of the consideration of the relatedness of the goods.” Recot, Inc. v. M.C. Becton, 214 F.3d 1322, 1328 (Fed. Cir. 2000).

Fame here is a matter of degree. Fame for likelihood of confusion “varies along a spectrum from very strong to very weak.” Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1374–75 (Fed. Cir. 2005). That is different from the fame needed for a dilution claim, which a mark either has or lacks. Id.

Fame is shown by evidence such as sales under the mark, advertising spending, and how long those signs of recognition have existed. Bose Corp. v. QSC Audio Prods., Inc., 293 F.3d 1367, 1371 (Fed. Cir. 2002). A party claiming fame must prove it clearly. TMEP § 1207.01(d)(ix) (citing Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1367 (Fed. Cir. 2012)).

Fame works in one direction. A finding of fame expands the earlier mark’s protection, and “the fame of a registered or previously used mark can never support a junior party.” L’Oreal S.A. v. Marcon, 102 U.S.P.Q.2d (BNA) 1434, 1438 (T.T.A.B. 2012). In the I AM decision below, the applicant’s own fame supported refusal rather than registration.

This factor looks very different in the two settings.

• Ex parte. The examining attorney is not expected to submit evidence of the cited mark’s fame, so the factor is normally treated as neutral. TMEP § 1207.01(d)(ix). An applicant gains nothing by showing the cited mark is not famous. The rare exception is a record where the examining attorney does prove fame, as in the JAWS decision below.
• Inter partes. In an opposition or cancellation, the owner of the earlier mark can offer sales, advertising and recognition evidence. There the factor can carry real weight. TMEP § 1207.01(d)(ix).

The reverse argument, that the earlier mark is weak, belongs mainly to factor 6 and to the comparison of the marks. In an ex parte appeal, an applicant cannot argue that the registered mark is so weak it lacks any source-identifying ability. That is an attack on the registration, for a cancellation proceeding. TMEP § 1207.01(d)(iv).

• Arguing in an ex parte response that the cited mark “is not famous.”
• Relying on the applicant’s own reputation or celebrity.
• Asserting fame without sales, advertising or length-of-use evidence behind it.
• Confusing this factor with the separate, stricter fame requirement for dilution.

9 of the 38 records in this library that code du Pont factors carry a finding on factor 5 (library as of 2026-09-19; a curated collection, not a random sample).

The finding is neutral in 6 of the 9; three of those six are one dispute, the three Made in Nature oppositions. It weighs toward confusion in 2, both from one applicant’s JAWS applications. None of the 9 is coded as driving the result. The remaining record is coded for the applicant, but its note concerns the cited mark’s conceptual weakness, which is a strength point and not fame; treat it as a coding defect, not a fame finding.

Fame proved ex parte. Mr. Recipe’s JAWS for an internet channel streaming cooking programs was refused over the registered JAWS for motion-picture video recordings. The examining attorney proved JAWS famous for those recordings, fame weighed heavily, and the Board found movie fans would assume a connection.

The applicant’s own fame. I AM for cosmetics and personal care products was refused over I AM for perfume. The applicant’s argument that the registered mark is not famous carried little weight, because fame of the cited mark is treated as neutral in an ex parte appeal. The applicant’s own fame supported refusal, not registration.

Fame not proved in an opposition. In the NATURE MADE opposition, the Board found fame not proven and the MADE IN NATURE marks conceptually weak, but registered and of moderate commercial strength. The Board still sustained the opposition.

If you are choosing a name, check whether it echoes a household brand in any field, not just your own. A famous mark can reach well beyond its own goods. You can run that check yourself.

If you have an ex parte refusal, leave fame out of the response unless the examining attorney made it an issue. Spend the effort on the marks, the goods, and third-party use.

If you own a well-known mark and are opposing someone, fame is evidence you build over years: sales records, advertising history, media coverage. Assembling it into a record the Board will credit is legal work. If you are in that position, Valet Law, PLLC can assess whether your evidence supports a fame finding.

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.