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Trademark Office Likelihood of Confusion Factors: The DuPont Factors

The trademark office (USPTO) will review a trademark application to determine whether the mark in that application is likely to cause confusion with another registered mark. And, if so, it will refuse registration of the application.

In particular, the relevant statute provides that an applied-for mark will be refused registration when it “consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office… as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive.” 15 U.S.C. §1052(d).

The USPTO uses the factors provided in In re E. I. Du Pont de Nemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973) to evaluate whether there is a likelihood of confusion, which are:

(1) The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. 
(2) The similarity or 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. 
(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 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 good will of the related business. 
(d) laches and estoppel attributable to owner of 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.”

The weight given to these factors may vary in individual cases and all factors may not be relevant in every case. The USPTO sees the first and second factors as key when evaluating a trademark application, i.e. the similarities between the marks and the similarities between the goods.

Citations: In re E. I. Du Pont de Nemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973); TMEP 1207.01; 15 U.S.C.S §1052(d); In re Thor Tech, Inc., 113 USPQ2d 1546 (TTAB 2015).

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Seventh Circuit Likelihood of Confusion Factors in Trademark Cases

To determine whether there is infringement in trademark cases, the question is whether there is a likelihood of confusion arising from the defendant’s use of a mark. Courts consider various factors to determine whether there is a likelihood of confusion. In the Seventh Circuit covering Illinois, Indiana, Wisconsin, federal courts consider the following factors:

1. the similarity between the marks in appearance and suggestion;
2. the similarity of the products;
3. the area and manner of concurrent use;
4. the degree of care likely to be exercised by consumers;
5. the strength of the plaintiff’s mark;
6. any actual confusion; and
7. the intent of the defendant to “palm off” his product as that of another.

The Seventh Circuit has also said that “These [factors] are useful insofar as they operate as a checklist to ensure that we do not overlook relevant evidence, but they are a means to an end, not an end in themselves.”

It also said, “No single factor is dispositive.” And “Courts may assign varying weight to each of the factors depending on the facts presented, though usually the similarity of the marks, the defendant’s intent, and actual confusion are particularly important.”

Citations: Bd. of Regents of the Univ. of Wis. Sys. v. Phx. Int’l Software, Inc., 653 F.3d 448, 454 (7th Cir. 2011); Autozone, Inc. v. Strick, 543 F.3d 923, 929 (7th Cir. 2008); Packman v. Chicago Tribune Co., 267 F.3d 628, 642 (7th Cir. 2001); Helene Curtis Indus. v. Church & Dwight Co., 560 F.2d 1325, 1330 (7th Cir. 1977).

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TTAB Admits Wayback Machine Pages to Show Third Party Use of Mark

Tour Management Services Inc. sought to register CHARLESTON HARBOR TOURS for arranging travel tours and cruises and providing boat transport, among other services. Spiritline Cruise Lines opposed the application asserting that the mark was primarily geographically descriptive.

Spiritline sought to introduce printouts from the Wayback Machine of the Internet Archive (Archive.org) to establish that third party websites displayed “Charleston Harbor Tours” on various dates in the past. Spiritline provided a declaration from the office manager of the Internet Archive that the printouts were authentic. The Trademark Trial and Appeal Board (TTAB) admitted the printouts from the Wayback Machine into evidence. The TTAB found that the declaration established that the printouts qualified under the business record exception for hearsay.

The TTAB ultimately refused registration of the mark on the basis that CHARLESTON HARBOR TOURS was primarily geographically descriptive and had not acquired distinctiveness.

Citation: Spiritline Cruises LLC v. Tour Management Services, Inc., Op. No. 91224000 (TTAB Feb. 7, 2020).



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Transferring Goodwill to a New Trademark: Using the Old and New Trademarks Together

Trademark owners develop goodwill associated with their trademarks by using the trademarks in connection with goods/services. Therefore, a name change risks loosing all the goodwill associated with the prior name in the marketplace. One way to mitigate this risk of loss is to use the old and new name together for a time. This will inform the marketplace that the new name is associated with the old. Hopefully some of the goodwill and recognition will transfer to the new name.

Recently Hitachi Power Tool rebranded as Metabo HTP. You can see the rebranding notice that was previously used below a miter saw in this Amazon listing:

This notice is very direct, providing a narrow to the new name and including the words “New Name.” They didn’t have to use “New Name”, but they did to be even more direct beyond the arrow.

You don’t have to use the “New Name” words. You could say Trademark A is now Trademark B. There are a number of options for trying to transfer the goodwill to a new name by using the old and new names together.

Unless the old brand is trying to escape a negative reputation by rebranding, the use of both the new and old trademark together for a time is a good method to try to transfer the goodwill and brand recognition developed under the old trademark to the new trademark.



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Adding a Descriptive Word to a Mark Unlikely to Avoid Confusion When Common Words Are Strong

I previously wrote about the trademark application for BEAST MODE SOCCER. In that case, evidence of third party use was not close enough to weaken the two registered marks for BEAST MODE owned by retired NFL football player Marshawn Lynch.

Another issue in that case was whether the addition of SOCCER in the applied-for mark was sufficient to distinguish it from the registered marks. It was not.

The court said, “When one incorporates the entire arbitrary mark of another into a composite mark, . . . inclusion of a merely suggestive or descriptive element, of course, is of much less significance in avoiding a likelihood of confusion.” 

How was SOCCER word was descriptive of the applicant’s T-shirt goods? The applicant Copeland-Smith was a soccer coach. And he had been training soccer players under his mark BEAST MODE SOCCER, which was registered under another applciation for “coaching services in the field of soccer; providing group coaching and learning forums in the field of soccer.” 

The overlapping elements, BEAST MODE, were strong and the SOCCER element was weak as descriptive. Therefore, the addition of SOCCER to BEAST MODE was not sufficient to distinguish it from BEAST MODE and avoid a likelihood of confusion.

Case: In Re: Copeland-Smith, No. 2018-1968 (Fed. Cir. 2019).

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Inventing the Bicycle: Why Did It Take So Long?

When discovering a solution to a problem, it is not uncommon to think, “Why didn’t I think of this earlier?” The question arises with inventions in general: “Why didn’t someone invent this earlier?”

Jason Crawford attempts to answer that question for bicycles in an post titled, “Why did we wait so long for the bicycle?” He considers a number of possibilities, such as technology factors, design iteration, the quality of roads, competition from horses, and economic factors.

Crawford dates early references to human powered four wheel vehicles to the 1400s. He says it wasn’t until 1817 that that a two wheel ancestor to the modern bicycle was invented by Karl von Drais, which he called Laufmaschine, or “running machine. ” It had a wood frame, no peddles, and was powered by pushing off the grounds with one’s feet. Drais was an aristocrat with free time to tinker.

But the key advance over the Laufmaschine was the addition of peddles, which didn’t arrive for decades (maybe between 1839 and 1860).

U.S. Patent 59,915 for a “Velocipede” issued in 1866.

And chains and gearing reportedly didn’t arrive until still later in the 1880s.

Crawford, considers whether the technology had not yet advanced sufficiently to allow the modern bicycle to become an adjacent possible. In other words, maybe “advanced metalworking was needed to make small, lightweight chains and gears of high and consistent quality, at an acceptable price–and that no other design, such as a belt or lever, would have worked instead.” Further, maybe inflatable (pneumatic) tires, which arrived around 1888, were important.

However, Crawford discounts the technology cause, at least somewhat, after considering other inventions, such as the cotton gin, and the flying shuttle, that took a long time to arrive and their prior invention didn’t appear to be limited by the state of technology.

Crawford concludes the need for economic surplus was one of the main contributors to the delay in the arrival of the bicycle. Nassim Talab has also noted this when he said, “Knowledge formation, even when theoretical, takes time, some boredom, and the freedom that comes from having another occupation.” Talab notes that many inventions originated from the English clergy, whom had extra time on their hands.

Crawford says, “it seems that there needs to be a certain level of surplus to support the culture-wide research and development effort that creates inventions.” He also notes that “Maybe GDP per capita just has to hit a certain point before people even have time, attention and energy to think about new inventions that aren’t literally putting food on the table, a roof over your head, or a shirt on your back.”

This fits with Nicola Tesla’s explanation of the importance of having time to both develop ideas and let them incubate, when he said, “After experiencing a desire to invent a particular thing, I may go on for months or years with the idea in the back of my head.”

Inventing is probably facilitated by (1) sufficient technology advancement to support the invention and adoption of the invention (i.e. the invention and its adoption is within the adjacent possible) and (2) sufficient economic surplus so that persons have time for thinking and tinkering.


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Inventing Play-Doh: Repurposing an Obsolete Product

History provides numerous examples of what could be called “accidental” inventions– inventions that were discovered or developed for one problem or purpose while the inventor was working on something else. Examples include penicillin and the slinky, among reported others.

An article at the Smithsonian explains the origins of Play-Doh. The creation of the Play-Doh material was not an accident. Instead the product owner found a new use for an existing product.

The existing product was a compound originally used for wiping and removing soot from wallpaper. Demand was falling for this product as fuel sources for heating moved from dirtier coal to cleaner oil, gas, and electricity. Joseph McVicker’s company selling the wallpaper cleaner was struggling when his sister-in-law Kay Zufall, a nursery school teacher, found children liked molding the pliable compound into various shapes. Play-Doh as a childern’s product was born.

Zufall reportedly coined the Play-Doh product name as well.

Zukfall, as a teacher, saw the world and the product differently from her perspective working with children. Something that was probably not obvious to McVicker. This is an example of an idea born not from solitude, but from a mix of perspectives.

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Third Party Use Not Close Enough to Goods of Registrant to Sufficiently Weaken Rights

David Copeland-Smith filed a trademark application on BEAST MODE SOCCER for T-shirts, which the USPTO refused based on two registered marks for BEAST MODE owned by retired NFL football player Marshawn Lynch. The registered marks covered the goods of “Men’s, women’s and children’s clothing, namely, shirts, sweatshirts; [and] headwear, namely hats, caps.”

Copeland-Smith argued the BEAST MODE mark was weak due to third party trademark registrations, applications, and uses of Beast Mode. The appeals court disagreed.

The seven third party registrations did not identify articles of closing, but rather pertained to ““computer software, dietary and nutritional supplements, beer, advertising and marketing consultancy, and entertainment in the nature of competitions in the field of fitness…” In other words, the goods/services of the third party registrations were not close enough to clothing to narrow Lynch’s rights in BEAST MODE.

Regarding uses, the Foreign websites identified by Copeland-Smith where of no probative value in determining likelihood of confusion in the US.

Further, many of the US websites with uses of Beast Mode were directed to goods and services other than clothing. The appeals court noted its prior decision where it said “T]he present analysis only involves goods like those being offered by the parties to the ‘relevant public,’ while third-party use outside of that relevant market is meaningless.”

Therefore, third party use of marks should be in connection with goods/services like those offered by the parties to have a good chance a narrowing trademark rights.

Case: In Re: Copeland-Smith, No. 2018-1968 (Fed. Cir. 2019)

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Design Patent on Open Ended Wrench, Functional or Ornamental?

The USPTO recently issued US Design Patent D859,108 covering a wrench, which is shown below.

Every part of this wrench is shown in broken lines except the U-shaped mouth working portion that is for engaging with another part, such as a nut, bold head, or the like. Therefore, the U-shaped part, shown in solid lines, is the only claimed part of the wrench.

I wonder whether the curvy design of the U-shaped part is functional. Design patents are to be directed to ornamental designs. So, if a design patent is directed to a design that is primarily functional, the patent can be invalid.

However, the standard for invalidating a design patent as directed to primarily functional matter is stringent. See Ethicon Endo-Surgery, Inc. v. Covidien, Inc., 796 F.3d 1312, 1328 (Fed. Cir. 2015). The Federal Circuit Court of Appeals has said that “[w]hen there are several ways to achieve the function of an article of manufacture, the design of the article is more likely to serve a primarily ornamental purpose.” It also said, “[I]f other designs could produce the same or similar functional capabilities, the design of the article in question is likely ornamental, not functional.”

Here, I don’t know whether the curvy design of the U-shaped part imparts a functional benefit, or, if so, whether other designs could also achieve that function. However, it is interesting that the only claimed portion of this wrench is the working mouth portion that is for engaging with another part, such as a nut, bolt head, or the like.

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How Limiting is a Specific Date and Time in a User Interface claimed in a Design Patent?

Apple recently was granted US Design Patent D861,014 for an electronic device with graphical user interface. The patent is directed to the user interface for a smart watch. Below is figure 1.

Apple kept the time and date in solid lines claiming them rather than making the time and date in broken lines. Providing the date and time in broken lines would have made those elements unclaimed and would not have limited the claimed design.

However, including the date and time might not be much of a limitation in terms of the actual date and time displayed. First, any competitor device with the same vertical stripe pattern and time in the upper right location would show 10:09 twice a day. The old adage applies that a broken clock is correct twice a day. Further, it is likely that Wednesday will fall on the 23rd of the month every now and then.

Presenting the date and time in solid lines does limit the claimed design here. But maybe not greatly in terms of the actual time of 10:09 or the date of Wednesday the 23rd. Instead, the limitation probably is more in terms of the location and presentation of the date and time.

The original application that resulted in the above patent contained drawings showing the date and time in broken lines as well as solid lines. But, Apple amended the application to focus on the non-broken line version. There is a continuation patent application filed where Apple might be pursing the broken line version, which is shown below. If Apple obtains a patent on the broken line version below, it will have hedged its risk that the solid line version is too limiting.