We Are Not The Same …
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Section 2 of the Lanham Act
No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it… [c]onsists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, 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)
Without debate, a “Section 2(d) Refusal - Likelihood of Confusion” is the most cited reason by an examining attorney in the Summary of Issues section of an office action. The Trademark Act Section 2(d) bars registration of an applied for mark that is so similar to a registered mark, that it is likely that consumers would be confused as to the commercial source of the goods or services.
Often referred to as the duPont factors, In re E.I. DuPont, 177 USPQ 563, 476 F.2d 1357 (1973) provides guidance as to the individual factors to be considered in an individual effort to overcome a refusal pursuant to Section 2(d). Those factors include:
(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 the owner of prior mark and indicative of lack of confusion.
(11) The extent to which an 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.
Despite the initial refusal on the registration of certain trademarks, the duPont factors provide an arsenal of theories to explore and articulate in support of registration. If you need help navigating a 2(d) refusal, we are here to help. Give us a call at 1-888-752-2629 or schedule an appointment here.