Does it help that similar marks already exist?

This is the main way to argue that a registered mark deserves less room. If the shared term is common in your field, small differences may be enough.

It is also easy to overestimate. A list of search results is not proof. The Board looks at what each item shows.

The sixth du Pont factor is “the number and nature of similar marks in use on similar goods.” 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)(iii) (May 2026) [hereinafter TMEP].

The question is whether buyers have seen so many similar marks for similar goods that they have learned to distinguish them by small differences. Evidence of third-party use of similar marks on similar goods “is relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection.” Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1373–74 (Fed. Cir. 2005).

This is the distinction that matters most.

• Third-party use shows commercial weakness: what buyers have actually encountered in the market. Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 1338–39 (Fed. Cir. 2015).
• Third-party registrations are not evidence that the marks are in use. They can still show, the way a dictionary does, that a shared term has a normally understood descriptive or suggestive meaning in the field. That is conceptual weakness. Id. at 1339; TMEP § 1207.01(d)(iii).

Two 2015 Federal Circuit decisions shaped this factor. In Juice Generation, a considerable number of third-party uses of “peace and love” for restaurant services or food products was relevant to the opposer’s mark’s strength, even without specifics about the extent or impact of each use. In Jack Wolfskin, evidence of ubiquitous use of paw-print designs on clothing made that part of the opposer’s mark relatively weak. Jack Wolfskin Ausrüstung für Draussen GmbH & Co. KGaA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 1373–74 (Fed. Cir. 2015).

• Closeness of the marks. Third-party marks must generally be as similar to the registered mark as the applicant’s is. Specialty Brands, Inc. v. Coffee Bean Distribs., Inc., 748 F.2d 669, 675 (Fed. Cir. 1984).
• Closeness of the goods. The third-party marks must be for goods as similar to the registered goods as the applicant’s are. Omaha Steaks Int’l, Inc. v. Greater Omaha Packing Co., 908 F.3d 1315, 1325–26 (Fed. Cir. 2018).
• Quantity. The use must be ubiquitous or considerable. A few examples fall short. In re i.am.symbolic, llc, 866 F.3d 1315, 1329 (Fed. Cir. 2017).
• Quality of registrations. Registrations under Section 66(a) or Section 44(e) with no declaration of use filed have very little probative value. Cancelled or expired registrations have none. TMEP § 1207.01(d)(iii).

Weakness narrows protection. It does not remove it. Even a weak mark is protected against a similar mark on closely related goods. TMEP § 1207.01(b)(ix). And the existence of third-party registrations cannot by itself justify registering a mark that is otherwise confusingly similar. TMEP § 1207.01(d)(iii).

The evidence rules are the same in both. One difference: in an ex parte appeal, an applicant cannot argue that third-party use has made the registered mark so weak that it identifies no source at all. That is an attack on the registration’s validity and belongs in a cancellation proceeding. TMEP § 1207.01(d)(iv); In re Dixie Rests., Inc., 105 F.3d 1405, 1408 (Fed. Cir. 1997).

• Filing registrations for unrelated goods.
• Treating registrations as proof of use.
• Relying on dead, foreign-based, or non-use-based registrations.
• Offering too few examples, thinly documented.

14 of the 38 records in this library that code du Pont factors carry a finding on factor 6 (library as of 2026-09-19; a curated collection, not a random sample).

The coding records it as favoring the applicant in 5, neutral in 6, and favoring a finding of confusion in 3. Only one of the 5 coded for the applicant ended with the refusal reversed. Three of the 5 are records from one consolidated opposition.

When it won. The Board reversed the refusal of I’M SMOKING HOT for cosmetics over SMOKIN’ HOT SHOW TIME. Dictionary meaning plus a modest amount of third-party use showed SMOKIN’ HOT conceptually and commercially weak for cosmetics. The marks were more dissimilar than similar overall.

Registrations without use. 5IVE STEAKHOUSE was refused for restaurant and bar services over 5IVESTEAK. Twenty-one third-party registrations without use evidence were a “far cry” from the Juice Generation and Jack Wolfskin showing, leaving the factor neutral.

Weakness shown, and still outweighed. I LOVE YOU was refused for bracelets over I LUV U for jewelry. Seven third-party jewelry registrations of I LOVE YOU variations, plus evidence of ornamental use by others, showed the phrase commonly used and conceptually narrow for jewelry. The strong similarity of the marks and the identity of the goods outweighed it.

If you are choosing a name, a crowded field tells you the shared word will not protect much. Your distinctiveness has to come from the rest of the mark.

If you have a refusal, search for live, use-based registrations and real marketplace uses of the shared term, for the same or closely related goods. Discard anything for distant goods. Capture each web use as a dated printout showing the URL. If what remains is a handful, the factor is unlikely to carry the response.

A first search is something you can run yourself. Turning it into admissible evidence and a weakness argument is legal work. If you have this refusal and a crowded field, Valet Law, PLLC can review the search and tell you whether it is strong enough to argue.

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.