What else can the Board consider?

Occasionally one unusual fact outweighs the rest. In In re Strategic Partners, Inc., 102 U.S.P.Q.2d (BNA) 1397 (T.T.A.B. 2012), similar marks on related goods would “under usual circumstances” have been refused, and the Board reversed because this factor outweighed the others. U.S. Pat. & Trademark Off., Trademark Manual of Examining Procedure § 1207.01 (May 2026) [hereinafter TMEP].

Intent works differently. Evidence that a party set out to trade on another’s reputation can support a finding of likely confusion. Good intentions do not avoid one.

The thirteenth factor in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973), is “any other established fact probative of the effect of use.”

The applicant’s own older registration. In Strategic Partners, the applicant owned a registration for a substantially similar mark for identical goods. It had coexisted with the cited registration for over five years and had become incontestable, so the cited registrant could no longer attack it on priority and likelihood of confusion. Under the Lanham Act, a petition to cancel a registration on likelihood-of-confusion grounds must generally be filed within five years of registration. 15 U.S.C. § 1064.

The TMEP now asks three things: whether the prior mark is the same or not meaningfully different; whether the goods are identical or identical in relevant part; and how long the registrations have coexisted. Coexistence is weighed with the other factors, not treated as dispositive. TMEP § 1207.01. An older registration for different services, or for a mark less like the cited one, has been treated as neutral. In re Country Oven, Inc., 2019 U.S.P.Q.2d (BNA) 443903 (T.T.A.B. 2019); In re Inn at St. John’s, LLC, 126 U.S.P.Q.2d (BNA) 1742, 1748 (T.T.A.B. 2018).

Bad faith. Intent is not an element of likelihood of confusion. “Whether there is evidence of intent to trade on the goodwill of another is a factor to be considered, but the absence of such evidence does not avoid a ruling of likelihood of confusion.” J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460 (Fed. Cir. 1991). Proof of bad faith can help the earlier owner. Proof of good faith does not help the applicant.

Bad faith also takes more than knowledge. “[A]n inference of ‘bad faith’ requires something more than mere knowledge of a prior similar mark.” It requires an intent to confuse. QuikTrip W., Inc. v. Weigel Stores, Inc., 984 F.3d 1031 (Fed. Cir. 2021). The Board applies the same rule under this factor. Monster Energy Co. v. Lo, 2023 U.S.P.Q.2d (BNA) 87 (T.T.A.B. 2023). Choosing a name while aware of a similar mark is not, by itself, bad faith.

Earlier court rulings. A court ruling about a different mark may be neither binding nor persuasive, as In re FCA US LLC, below, shows.

What evidence moves it. Status records and dates for the applicant’s prior registration. For intent, documents from the time the mark was chosen.

Common mistakes. Relying on a prior registration for a different mark or different goods. Treating coexistence under five years as though it carried the same weight. Treating knowledge as bad faith. Raising bad faith late. Arguing honest intent, which does not answer a confusion claim.

8 of the 38 records in this library that code du Pont factors carry a finding on factor 13 (library as of 2026-09-19; a curated collection, not a random sample). Three of the eight are oppositions between the same parties, decided the same day. The factor was coded for the applicant in one record, toward refusal in one, and as neutral in six.

The applicant’s win is In re Allegiance Staffing. The Board reversed a refusal of ALLEGIANCE STAFFING over ALLEGIS for identical staffing services. The applicant’s prior identical registration had coexisted with eight ALLEGIS registrations for eleven years, showing the Office itself long saw no conflict.

In In re USA Warriors Ice Hockey Program, Inc., the same argument failed. The applicant’s older near-identical registration had coexisted with the cited marks for only about three and a half years. It was still open to cancellation, so the coexistence did not outweigh the other factors.

In In re FCA US LLC, an earlier district court finding of no confusion involved a different mark, JEEP WRANGLER MOAB. The Board found it neither preclusive nor persuasive. The refusal of MOAB over MOAB INDUSTRIES was upheld.

In Major League Baseball Players Ass’n v. Chisena, a bad-faith argument made for the first time in a reply brief was not weighed because it came too late, though the record negated the applicant’s claims of good faith. The Board sustained the oppositions on the other factors.

If you already own a registration for nearly the same mark, check how close the old mark is to the new one, whether the goods match, and whether both registrations have coexisted for more than five years. The USPTO’s public records show all three.

If you think the other side copied you on purpose, preserve the evidence and raise it at the right stage. Knowledge alone is not bad faith.

Pulling your registration history is work you can do alone. Deciding whether a prior registration or an intent argument can carry a response or a Board case is where a lawyer earns the fee.

If you have a refusal and an older registration of your own, Valet Law, PLLC can compare the two and tell you whether the coexistence argument is available.

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.