What are the Trademark DuPont Factors?

Are we talking about real or theoretical trademark confusion?

Likelihood of confusion can be a confusing subject. What makes one trademark too similar to another? When you are thinking of a new product name to apply for, how do you avoid choosing a mark that might get rejected for being confusable with other trademarks? The DuPont factors consist of a list of considerations when comparing one mark to another to determine whether there is a likelihood of confusion between the trademarks. Let’s dive into those factors.

Need to apply for a trademark that will avoid confusion? Contact US patent and trademark attorney Vic Lin at vlin@icaplaw.com to explore how we can help get your trademark registered.

List of DuPont Factors

So what are the trademark DuPont factors? Here are the 13 factors:

1. Similarities of the marks themselves (sight, sound, appearance);
2. Relatedness of the goods and services;
3. Trade channels;
4. Consumer sophistication and purchasing conditions;
5. Fame and level of recognition;
6. Number of similar marks on similar or related goods or services (weakness of mark);
7. Any actual confusion;
8. Length of concurrent use without confusion and conditions of such use;
9. Variety of goods or services that use a similar mark;
10. Market interface between the applicant and the owner of a prior trademark;
11. Applicant’s right to exclude others form using its mark on its goods or services;
12. Extent of potential confusion; and
13. Other relevant facts.

Which DuPont factors are most important?

By far, the most important factors are the first two: similarities of the marks themselves and the similarities of the respective goods or services. The strongest arguments against likelihood of confusion refusals would tackle both factors. Ideally, you want to show that the marks themselves are very dissimilar and that that respective goods or services are completely unrelated.

Trademark refusals in real life, however, rarely present such ideal conditions. Often, only one of the two factors might give you a stronger argument.

How does the USPTO decide arguments about no likelihood of confusion?

The USPTO uses a sliding scale between the first two factors. For example, a high similarity between the marks themselves (1st Factor) would mean that the goods or services do not have to as related in order to find a likelihood of confusion. In the same, a high similarity between the respective goods or services would mean that the marks themselves do not have to so similar in order to find confusion likely.

This is where it pays to hire experienced trademark attorneys who can gauge the probability of registering your desired trademark. Experienced trademark attorneys can review knockout search results of similar trademark USPTO filings to give you guidance on applying for a prospective mark or possibly pivoting to a new trademark.

Besides similarities in the marks and respective goods, what other DuPont factors are second in importance?

The level of importance of the remaining 11 factors will often depend upon the specific circumstances of each case. In particular, your situation may involve certain factors more than others.

If forced to choose, the following factors could bolster an argument that there is no likelihood of confusion:

• Trade channels (3rd factor);
• Crowded field with high number of similar marks (6th factor); and
• Other established facts probative of the effect of use (13th factor).

Under the 13th factor, a prior registration of a similar mark can be an effective argument that there is no likelihood of confusion. If there was no confusion back then, why would there be confusion now considering that the marks and goods are the same?

Need to argue that your trademark is not similar?

Winning the likelihood of confusion argument consists of making the right points, and doing it persuasively. Contact US patent and trademark attorney Vic Lin at vlin@icaplaw.com to explore how we can help you overcome a Section 2(d) refusal and get trademark registered.