Does it matter whether the applicant can stop others from using the mark?

Most of the du Pont factors look at the earlier mark: how strong it is, how widely it is used, whether it has caused confusion. This one looks at the applicant. It gives an established business a way to show that its mark is not a newcomer riding on someone else’s name, but a mark with its own recognition.

It is not a priority rule. Proving that you have stopped third parties does not give you rights against an owner who registered or used first. It is one fact about the marketplace, weighed with the others.

The eleventh factor in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973), is “the extent to which applicant has a right to exclude others from use of its mark on its goods.”

What it measures. The Board has said the factor “does not consider the strength or fame of the applicant’s mark in the same way the scope of protection is determined for the prior user under DuPont factor five.” Monster Energy Co. v. Lo, 2023 U.S.P.Q.2d (BNA) 87 (T.T.A.B. 2023). The question is not how famous the applicant’s mark is. It is what the applicant’s use has established in the marketplace and in buyers’ minds. Id.

What proves it. Evidence that the applicant has actually asserted its rights to exclude others: cease-and-desist letters that ended the other use, successful oppositions or cancellations, court judgments or settlements in which third parties stopped. In McDonald’s Corp. v. McSweet, LLC, 112 U.S.P.Q.2d (BNA) 1268, 1284-85 (T.T.A.B. 2014), the applicant’s sales and advertising figures did not establish an appreciable level of consumer recognition, and there was “no evidence that Applicant, in fact, has successfully asserted its rights so as to ‘exclude’ anyone else” from using the mark or any similar mark. The Board treated the factor as neutral.

What does not prove it. The mere assertion of common-law use. Id. (citing In re Davey Prods. Pty Ltd., 92 U.S.P.Q.2d (BNA) 1198, 1205 (T.T.A.B. 2009)). Owning other registrations. Saying the applicant could stop others. Evidence that is not properly in the record: in Monster Energy, the applicant’s testimony was withdrawn, leaving no probative evidence on the point, and the factor did not help. Monster Energy, 2023 U.S.P.Q.2d (BNA) 87.

Where it comes up. Mostly in oppositions and cancellations, where the applicant has a long history of use and a chance to put in testimony. In an application refused in examination, the applicant can submit evidence, but a newer business seldom has an enforcement history to show.

Common mistakes. Confusing this factor with factor 5 and arguing that the applicant’s own mark is famous. Treating the factor as a defense to priority. Relying on a single letter with no evidence of what happened next. And assuming that because the applicant has never been challenged, it has a right to exclude. Silence proves nothing about enforcement.

No record in this library carries a finding on factor 11. That is true of all 38 records in this library that code du Pont factors (library as of 2026-09-19; a curated collection, not a random sample).

That fits how the factor works. It depends on an enforcement record that few applicants bring, and 32 of the 38 coded records are ex parte appeals from refusals, where that kind of evidence rarely appears.

If you own a mark and expect to rely on it, keep a file of every enforcement step and how it ended: the letter, the reply, the date the other use stopped, any settlement or Board result. That file is what this factor runs on.

Keeping that record is something you can do yourself, and it costs little. Deciding whether to send a demand, and presenting an enforcement history as evidence in an opposition or cancellation, is legal work, and that is where a lawyer earns the fee.

If you are in an opposition or cancellation and have an enforcement history, Valet Law, PLLC can review it and tell you whether it is worth putting in the record.

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