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In re E.I. duPont de Nemours & Co., 476 F.2d 1357 (CCPA 1973)

• The Trademark Trial and Appeals Board had refused to register DuPont's mark "RALLY" based on confusing similarity to another company's registered mark of the same name.
  • DuPont's mark was used in relation to car polish.
  • The other company's mark was used in relation to all purpose detergent.
• DuPont and the other company, Horizon, had entered into an agreement limiting their uses of the mark to the respective categories "automotive after-market" and "commercial building or household market".
  • Sales of products "incidentally usable" in the other party's market was permitted, however, any crossover marketing were explicitly prohibited.
• In denying registration of DuPont's mark, the The Trademark Trial and Appeals Board stated that its obligation to protect the public interest by eliminating the likely risk of confusion between related product lines weighed more heavily than an agreement between the parties concerned to limit marketing and sales.
• The Court of Appeals found consideration of the following factors to be the proper means of determining likelihood of confusion for similar marks under §1052(d):
  
  
  1. The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.
  2. The similarity or dissimilarity of and nature of the goods or services described in an application or registration or in connection with which a prior mark is in use.
  3. The similarity or dissimilarity of established, likely-to-continue trade channels.
  4. The conditions under which and buyers to whom sales are made, i.e. "impulse" vs. careful, sophisticated purchasing.
  5. The fame of the prior mark (sales, advertising, length of use).
  6. The number and nature of similar marks in use on similar goods.
  7. The nature and extent of any actual confusion.
  8. The length of time during and conditions under which there has been concurrent use without evidence of actual confusion.
  9. The variety of goods on which a mark is or is not used (house mark, "family" mark, product mark).
  10. The market interface between the applicant and the owner of a prior mark:
      
      (a) a mere "consent" to register or use.
      (b) agreement provisions designed to preclude confusion, i.e. limitations on continued use of the marks by each party.
      (c) assignment of mark, application, registration and goodwill of the related business.
      (d) laches and estoppel attributable to the owner of the prior mark and indicative of lack of confusion.
      
      
  11. The extent to which applicant has a right to exclude others from use of its mark on its goods.
  12. The extent of potential confusion, i.e., whether de minimis or substantial.
  13. Any other established fact probative of the effect of use.
  • No single factor was required to be determinative, rather from one case to another each might have a dominant role.
    • All evidence may be considered in relation to the issue of confusion.
    • Variation should be found in the weight to be given any one particular type of evidence.
  • Making the above factual determination based on the listed factors was how the Patent office was to serve the public interest under the Trademark Act, rather than by considering it as a type of separate abstract element.
  • The appeals court found that substantial weight should be given to detailed agreements of the type which the parties had here.
    • The court thought it should be sufficient that parties' pecuniary interests depend on the effectiveness of trademark use agreements.
      • That is, in the view of the Circuit, parties acting in an economically rational manner would not attempt to create a situation where revenue-depriving confusion between their marks would result.