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District Circuits

Federal Circuit Likelihood of Confusion Factors

Federal Circuit Likelihood of Confusion Factors

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There are nine general factors when considering likelihood of confusion:

  1. The likelihood that the actor's goods, services or business will be mistaken for those of the other
  2. The likelihood that the other may expand his business so as to compete with the actor
  3. The extent to which the goods or services of the actor and those of the other have common purchasers or users
  4. The extent to which the goods or services of the actor and those of the other are marketed through the same channels
  5. The relation between the functions of the goods or services of the actor and those of the other
  6. The degree of distinctiveness of the trademark or trade name
  7. The degree of attention usually given to trade symbols in the purchase of goods or services of the actor and those of the other
  8. The length of time during which the actor has used the designation
  9. The intent of the actor in adopting and using the designation

The test for likelihood of confusion, however, depends on jurisdiction. Some common factors include:

  1. Strength of plaintiff's mark: Arbitrary, suggestive, descriptive
  2. Similarity of marks: Sound, appearance and connotation
  3. Similarity of goods or services
  4. Defendant's intent
  5. Actual confusion
  6. Sophistication of buyers or care exhibited by purchasers

Not all Factors are evenly weighted. They are fact dependent and are subjectively determined on a case by case basis.

The Federal Circuit uses The Dupont Factors in cases of Likelihood-of-Confusion.

The Dupont Factors: 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
  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
  3. The similarity or dissimilarity of established, likely-to-continue trade
  4. The conditions under which and buyers to whom sales are made, i.e. "impulse" vs. careful, sophisticated
  5. The fame of the prior mark (i.e. sales, advertising, length of use).
  6. The number and nature of similar marks in use on similar
  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 (i.e. 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, (b) agreement provisions designed to preclude confusion, i.e. limitations on continued use of the marks by each, (c ) assignment of mark, application, registration and good will of the related, (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

Rhonda Harper MBA, Expert Witness

Rhonda HarperRetained by 100+ law firms since 2005, Ms. Harper is courtroom proven. She has been engaged to provide 65+ surveys, 80+ reports, 30+ rebuttals, 45+ depositions, and serve in 20+ trials. She has provided services to both Plaintiffs (60%) and Defendants (40%) across trademark and trade dress, packaging, merchandising, defamation, licensing, breach of contract, advertising, and commercial reasonableness. She has provided services in virtually every Circuit as well as JAMS and TTAB.

Ms. Harper is routinely retained to formulate expert surveys, conduct rebuttal critiques, or construct rebuttal surveys to show the potential difference in results with properly designed and executed surveys. She has extensive experience and a deep understanding of survey design, sampling, question construction, data analysis, and methodological pitfalls that introduce bias or systematic error.

Ms. Harper's 30+ year career includes serving as a Fortune 100 Chief Marketing Officer. Having authored two books, she is a former Adjunct MBA Marketing Professor.

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