Confusingly Similar Marks
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Standards for Determining Likelihood of Confusion with a Similar Mark
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):
- The similarity or dissimilarity of the marks in
their entireties as to appearance, sound,
connotation and commercial impression.
- 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.
- 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. careful,
- The fame of the prior mark (sales, advertising,
length of use).
- The number and nature of similar marks in use on
- 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 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.
- The extent to which 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.
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