How the USPTO decides whether two trademarks are too close

If the refusal stands, the application dies and the money spent on it is gone. Keeping the application alive preserves the filing date. If the mark ultimately registers, that filing date can matter to nationwide priority under Section 7(c), subject to earlier users and other earlier priority rights.

Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d), bars registration of a mark that so resembles a registered mark as to be likely to cause confusion, mistake, or deception. The factors come from In re E.I. du Pont de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973).

Not every factor matters in every case. Only the factors of significance to the particular mark need be considered, and they are weighed rather than counted. See In re Mighty Leaf Tea, 601 F.3d 1342, 1346 (Fed. Cir. 2010).

The Board applies the factors for which there is evidence in the record. Silence on a factor is not a finding.

The thirteen du Pont factors, in their conventional order. The count beside each is the number of records in this library that carry a finding on it, whether neutral, weighing for or against confusion, or driving the result.

Each factor has its own page:

1. Similarity of the marks
2. Relatedness of the goods or services
3. Trade channels
4. Conditions of sale and buyer care
5. Fame of the prior mark
6. Similar marks already in use
7. Actual confusion
8. Side-by-side use without confusion
9. Variety of goods the mark is used on
10. Dealings between the owners, including consent agreements
11. The applicant’s right to exclude others
12. How much confusion is possible
13. Any other probative fact

Most writing about Section 2(d) recites the factors. This is how they were coded across the decisions in this library.

In the Section 2(d) decisions coded in this library, factors 1 and 2 were the factors most often identified as driving the result.

If you have a refusal in hand, most pre-registration Office Actions give you three months from the issue date, with a one-time three-month extension available for a fee. Section 66(a) applications work differently. Your letter states the deadline that applies to you. Read the examining attorney’s evidence before you read the refusal — the evidence is usually where the answer is.

Comparing one mark against one registration on clearly unrelated goods is often a call you can make yourself. A refusal in hand, or a close mark on the same goods, is where an attorney’s read pays for itself.

If you have a refusal, Valet Law, PLLC can review the examining attorney’s evidence and tell you what the response has to show.

Attorney review is provided by Valet Law, PLLC. 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.