When comparing whether a “likelihood of confusion” exists between two trademarks, a multi-factor test is employed. While each jurisdiction has a specific set of factors that get used, the United States Patent and Trademark Office (USPTO) uses the factors set forth in In re E.I. du Pont de Nemours & Co so these “likelihood of confusion” factors are commonly referred to as the “DuPont Factors.”
While the DuPont factors can be used for folks doing trademark clearance searches, for attorneys who are assessing a likelihood of confusion in preparation for litigation, a look at the specific factors in one’s jurisdiction is important.
For this reason, we have listed the pertinent factors for each of the jurisdictions that MG Miller practices in: the federal circuit (USPTO), the Second Circuit (New York), and the Third Circuit (New Jersey), as well as copies of the controlling case in each jurisdiction. These are provided strictly for educational purposes, enjoy!
Federal Circuit
In re E.I. du Pont de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973)
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 . . . 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.
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 the 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.
10. The market interface between the applicant and the owner of a prior mark.
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.
13. Any other established fact probative of the effect of use.
In the Second Circuit the precedential case is Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir. 1961), often referred to as The Polaroid Factors.
Second Circuit
Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir. 1961)
1. Strength of the plaintiff’s mark
2. Similarity of the marks
3. Proximity of the products
4. Likelihood that the plaintiff will bridge the gap between the two products
5. Actual confusion
6. Defendant’s good faith in adopting its own mark
7. Quality of defendant’s product
8. Sophistication of the buyers of the plaintiff's and defendant's goods or services
In the Third Circuit, the cases are Interpace Corp. v. Lapp, Inc., 721 F.2d 460 (3d Cir. 1983) and Scott Paper Co. v. Liquid Gold, Inc., 589 F.2d 1225 (3d Cir. 1978). These factors are known as the Lapp/Scott Paper Factors.
Third Circuit
Interpace Corp. v. Lapp, Inc., 721 F.2d 460 (3d Cir. 1983)
Scott Paper Co. v. Liquid Gold, Inc., 589 F.2d 1225 (3d Cir. 1978).
1. Similarity of the marks
2. Strength of the plaintiff’s mark
3. The price of the goods and other factors indicative of the care and attention expected of consumers when making a purchase
4. The length of time defendant has used the mark without evidence of actual confusion
5. Intent of the defendant in adopting the mark
6. Evidence of actual confusion
7. Whether the goods, competing or not competing, are marketed through the same channels of trade and advertised through the same media
8. Extent to which the targets of the parties’ sales efforts are the same
9. The relationship of the goods in the minds of consumers, whether because of the near-identity of the products, the similarity of function, or other factors
10. Other facts suggesting that consumers might expect the plaintiff to manufacture both products, to manufacture a product in defendant’s market, or that plaintiff is likely to expand into defendant’s market