“Likelihood of confusion” is a legal test. It is applied by the courts and administrative agencies to contested Trademark/Service Mark proceedings and by United States Patent and Trademark Office (USPTO) Examiners during the registration process for Trademark/Service Mark Applications.
Likelihood of Confusion – What Law Applies?
Before a federal Trademark is granted, an Applicant must prove to the USPTO that the Trademark was used on goods and/or services in commerce that the U.S. Congress may lawfully regulate. The geographical limit for a federal Trademark registration is the geographical boundary of the United States and its territories.
Federal jurisdiction of Trademarks/Service Marks (hereinafter Trademarks) can be controlled by the precedent of the US Supreme Court or one of the thirteen federal circuit courts sitting beneath the US Supreme Court.
Each of the thirteen federal circuits has its own case law precedent for adjudicating “likelihood of confusion” for contested Trademarks. Although the case law precedent of the federal circuits is similar, it is not identical.
When a Trademark is granted at the State level, the law of that State controls court and agency proceedings. The laws of the several States are variable on the standards for “likelihood of confusion.” The geographical limit for a State Trademark is the border of the State.
Likelihood of Confusion – USPTO Trademark Applications
For the USPTO, the “likelihood of confusion” precedent for Trademark Examiners is set forth in the case of In re E. I. du Pont de Nemours & Co., 177 U.S.P.Q. 563 (C.C.P.A. 1973). Today, the Court of Appeals for the Federal Circuit has jurisdiction over appeals from USPTO agencies and adopted the du Pont case as precedent.
On page 567 of the du Pont case, the court stated:
“In testing for the likelihood of confusion under 15 U.S.C. § 1052 Sec. 2 (d), the following, when of record, must be considered:
- The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.
- The similarity of dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use.
- The similarity or dissimilarity of established, likely-to-continue trade channels.
- The conditions under which and buyers to whom sales are made, i.e., “impulse” vs. care, sophisticated purchasing.
- The fame of the prior mark (sales, advertising, length of use.)
- The number and nature of similar marks in use on similar goods.
- The nature and extent of any actual confusion. The length of time during and conditions under which there has been concurrent use without evidence of actual confusion.
- The variety of goods on which a mark is or is not used (house mark, “family” mark, product mark).
- The market interface between applicant and the owner of a prior mark… (e.g., have the interested parties executed a contract to proclaim there is no confusion?).
- The extent to which the applicant has a right to exclude others from use of its mark on its goods.
- The extent of potential confusion, i.e., whether de minimis or substantial.
- Any other established fact probative of the effect of use.”
If the Examiner or the USPTO determines there is a “likelihood of confusion” between Applicant’s Trademark and a prior Registration or pending Application, the USPTO will refuse to register the junior Applicant’s Trademark.
With regard to the “likelihood of confusion” test, each of the federal circuit courts have adopted precedent similar to the test set forth in the case of In re E. I. du Pont de Nemours & Co., 177 U.S.P.Q. 563 (C.C.P.A. 1973). When possible, parties to an infringement will attempt to try the case in a venue most favorable a party’s evidence and arguments.
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