One of the most common reasons the USPTO refuses a trademark application is a likelihood of confusion with an existing trademark. If two trademarks are too similar and cover related goods or services, the USPTO may determine that consumers could mistakenly believe they come from the same source.
But how does the USPTO determine whether two trademarks are confusingly similar?
USPTO examining attorneys analyze 13 legal criteria known as the DuPont factors. These factors come from an important federal trademark case and provide the framework for evaluating likelihood of confusion.
Understanding the DuPont factors can help business owners assess potential trademark conflicts before filing an application—and better understand a likelihood of confusion Office Action if the USPTO issues one.
What Are the DuPont Factors in Trademark Law?
The DuPont factors come from the 1973 case In re E. I. DuPont de Nemours & Co. The decision identified 13 factors that may be considered when determining whether consumers are likely to confuse one trademark with another.
The USPTO uses these factors when evaluating trademark applications under Section 2(d) of the Lanham Act, which permits refusal of a trademark application when the applied-for mark creates a likelihood of confusion with a previously registered mark.
Not every DuPont factor is relevant in every case. The importance of each factor depends on the particular trademarks, goods or services, marketplace, and evidence involved.
What Are the 13 DuPont Factors?
The 13 DuPont factors used in a trademark likelihood of confusion analysis are:
- Similarity of the trademarks: How similar are the marks in appearance, sound, meaning, and overall commercial impression?
- Similarity of the goods or services: How closely related are the products or services identified by the trademarks?
- Trade channels: Are the goods or services likely to travel through the same or similar channels of trade and reach the same consumers?
- Conditions of purchase: Are consumers likely to make quick purchasing decisions, or are the goods or services expensive enough that purchasers are likely to exercise greater care?
- Fame of the prior trademark: How strong or well-known is the existing trademark?
- Similar trademarks in use: Are there other similar trademarks being used for related goods or services? Evidence of extensive third-party use can sometimes affect the strength and scope of protection of a mark.
- Actual confusion: Is there evidence that consumers have actually confused the two trademarks?
- Concurrent use without confusion: Have the trademarks coexisted in the marketplace for a meaningful period without evidence of actual consumer confusion?
- Variety of goods or services: Is the prior trademark used in connection with a broad variety of products or services?
- Market interface between the parties: Is there an agreement, consent, license, or other relationship between the trademark applicant and the owner of the cited mark?
- Applicant’s right to exclude others: What is the extent of the applicant’s legal right to prevent others from using its trademark?
- Extent of potential confusion: If confusion could occur, how significant is the potential for that confusion?
- Other relevant facts: Are there any other established facts or evidence that could affect the likelihood of confusion analysis?
Which DuPont Factors Are Most Important?
Although there are 13 DuPont factors, two factors are particularly important in many USPTO trademark examinations:
- The similarity of the trademarks
- The similarity or relatedness of the goods or services
These two factors are often at the heart of a USPTO likelihood of confusion analysis.
1. Similarity of the Trademarks
The USPTO does not determine trademark similarity by looking only at whether two names are spelled exactly the same.
Marks may be compared based on their:
- Appearance
- Sound
- Meaning or connotation
- Overall commercial impression
This means two trademarks can potentially create a likelihood of confusion even when they are not identical.
For example, differences in spelling may not necessarily avoid a refusal if the marks sound alike or convey substantially similar meanings.
2. Relatedness of the Goods or Services
The USPTO also considers whether the goods or services associated with the two trademarks are related.
The products do not necessarily have to be identical for the USPTO to find a likelihood of confusion. The question is whether consumers might reasonably believe that the goods or services originate from the same company or are somehow affiliated.
That is why a proper trademark clearance search should consider more than exact matches for a proposed brand name. It should also evaluate similar trademarks used in connection with related products and services.
How Does the USPTO Determine Likelihood of Confusion?
A trademark likelihood of confusion analysis is not based on a simple formula.
The examining attorney considers the relevant DuPont factors and weighs the available evidence. Some factors may favor registration, while others may favor refusal.
For example, two trademarks might have some similarities but be used for very different goods or services. In another case, relatively small differences between two marks might not be enough to distinguish them when the goods or services are closely related.
This balancing process is one reason likelihood of confusion is one of the biggest gray areas in trademark law.
What Is a Section 2(d) Likelihood of Confusion Refusal?
If a USPTO examining attorney determines that an applied-for trademark is likely to cause confusion with an existing registered trademark, the USPTO may issue an Office Action refusing registration under Section 2(d) of the Trademark Act.
A Section 2(d) refusal does not necessarily mean that the application is over.
Depending on the facts, an applicant may be able to respond with legal arguments and evidence addressing issues such as:
- Differences between the trademarks
- Differences between the goods or services
- Differences in commercial impression
- Weakness of wording shared by the marks
- Third-party trademark registrations or marketplace use
- Purchasing conditions or consumer sophistication
- Other relevant DuPont factors
The appropriate response depends heavily on the particular trademarks and evidence involved.
Can You Avoid a Likelihood of Confusion Refusal?
No trademark search can guarantee that an application will be approved, but conducting a comprehensive trademark search before filing can help identify potential likelihood of confusion problems.
A strong trademark clearance process should look beyond identical registered trademarks and consider:
- Similar spellings
- Phonetic similarities
- Similar meanings
- Related goods and services
- Pending trademark applications
- Existing registrations
- Relevant marketplace use
Identifying these issues before filing can help a business make a more informed decision about whether to proceed with a trademark application.
Why the DuPont Factors Matter for Your Trademark
The DuPont factors affect some of the most important decisions in the trademark registration process.
They can help determine whether:
- A proposed trademark is available for registration
- An existing registration could block a new application
- The USPTO will issue a Section 2(d) refusal
- An applicant may have arguments for overcoming a likelihood of confusion Office Action
Because the analysis involves multiple factors and often significant judgment, seemingly small differences between two trademark situations can lead to very different outcomes.
Get Help With a Trademark Likelihood of Confusion Analysis
If you are concerned that your proposed trademark is too similar to an existing mark—or if you have already received a USPTO likelihood of confusion Office Action—an experienced trademark attorney can evaluate the relevant DuPont factors and help determine the best path forward.
At Erik M. Pelton & Associates, our practice focuses on trademarks. We help businesses search, register, protect, and defend their brands before the USPTO.
Concerned about a potential trademark conflict or Section 2(d) refusal? Contact our team to schedule a consultation and discuss your trademark.
