Hi, this is Dan Smith of DPS Legal Counsel, and welcome to today’s podcast episode of 21st Century Oil, where I talk about intellectual property and how it relates to entrepreneurship in the 21st century.
Okay. Today I want to talk about what is commonly known as the DuPont factors. What are the DuPont factors and how does that play into trademarks and trademark analysis? Well the trademark factors are essentially they come out of a famous case from 1973 that dealt with the DuPont company — E. I. DuPont deMours and Company. And as I said, it’s a case from 1973.
In that case the court basically established a number of factors that should be looked at any time there is an issue involving whether there is a likelihood of confusion between two existing trademarks. This sometimes comes up and in the case of someone opposing a trademark application because they have an existing trademark and they believe the new trademark application is for a trademark that would be confusing confusingly similar to that existing trademark. It sometimes will come up in a situation where an applicant files an application for a trademark and the examining attorney at the U.S.P.T.O. Determines that there is a likelihood of confusion between that applied for trademark and an existing or pending trademark application that was already there either registered or on file before the application of the new trademark comes in. And then if the applicant is unsatisfied or dissatisfied with the determination of the examining attorney, after asking for reconsideration, if that’s denied the applicant often will go to the Trademark Trial and Appeal Board and seek to have that determination by the examining attorney overturned.
So that also in that instance the trademark trial and appeal board would be looking at the DuPont factors to determine if there was a likelihood of confusion. So it could come up in an opposition case. It could come up in in a case in which an applicant is appealing, a denial of trademark ability by the examining attorney. And so what are the DuPont factors? What are the, how did they help a decision maker like the TTAB or perhaps even court, if it comes before court, how does it help them decide if there is a likelihood of confusion between two trademarks, so what are they there are essentially 13 different factors and they the court yeah, or the board will look at them and determine if one or the other falls more in line of in favor of one party or the other.
And there’s not a exact weighting of the factor so that if you have more in your favor than the other, but it’s close that you necessarily would win. It’s, it’s a, it’s a little more subjective than that, but the, but the 13 factors are essentially number one, the similarity or dissimilarity of the marks in their entireties as to a parent’s sound connotation and commercial impression, that’s factor. Number one, looking at how similar the marks are. Number two is the similarity or dissimilarity and nature of the goods or services described in the application or registration and in connection with which a prior mark is in use. So number two, and the factors are how similar are the goods in question or the services and questions? So the first two are really the most important and key considerations and the DuPont factors, how similar are the marks in question and how similar are their goods or services?
The third DuPont factor is the similarity or dissimilarity of the law of the trade channels in which the marks are, are employed number for the conditions under which and buyers to whom sales are made. For example, impulse versus careful sophisticated purchasing number five is the fame of the prior mark, number six, the nature, the number and nature of similar marks and use on similar goods. Number seven, the nature and extent of any actual confusion. Number eight, the length of time during, and the conditions under which there has been concurrent use without evidence of actual confusion, number nine, the variety of goods in which a mark is, or is not used. Number 10, the market interface between the applicant and the owner of a prior mark, number 11, the extent to which an applicant, a right to exclude others from use of its mark on its goods.
Number 12, the extent of potential confusion and number 13, any other established fact probative of the effect of use. Now, I don’t really intend today to go into all of these different factors in any great detail that would take awhile. The key takeaways really I want anyone to get who’s listening to this podcast is that there are factors that are looked at when there’s any kind of analysis of whether there is a likelihood of confusion and those all arise out of the DuPont case and are known as the DuPont factors and the two most important factors of the DuPont factors, not surprisingly are how similar are the marks in question and how similar are the goods or services to which the marks are attached. And in comparison one to the other now I’d like to turn to a couple of recent decisions of the TTA B a couple of opinions that have come out in the last few weeks and kind of walk through those in, in connection with in connection with the the talk today on, on a likelihood of confusion.
The first one of those is a case in the trademark trial and appeal board in which to to companies that sell or S alcoholic beverages were engaged in a dispute as to the trademark ability of one of the others trademark in this case this is the case of high wines limited versus high degree tequila LLC. That’s eight high wines limited is AGI wines limited versus high degree to Keela LLC. It’s high HII spelled the same as the high wine high degree tequila LLC. Now in this case high degree to Keela was the applicant for a new trademark of co, which was high HII degree in standard characters. And it was for distilled blue Agava liquor in international class 33. Now the opposer to that application was high wines limited which claimed that there would be a likelihood of confusion with its existing marks.
Now, the high winds limited the opposer had a couple of marks that were discussed in this case. One was a, a mark that that was for alcoholic beverages other than beer and the other was for wines. Now one part of the analysis was whether or not the goods are between that what the opposer their, their trademarks related to more similar or identical to the goods that high wants limited the applicant had which was for this distill blue Agava liquor. The court indicated that with respect to wines, not beer, that that was not similar, but the other alcoholic beverages essentially was and so having determined that the server, the, the goods were similar it, the big, biggest part of the discussion was whether the two marks were similar.
And the mark and question with respect to the applicant, as I mentioned, was high HR degree the word D E G R E all in, in standard characters, the existing mark for alcoholic beverages, except beer was the word high IHI with an exclamation point. After a lot of analysis, the court determined that the marks were not confusingly similar. And so the application was was going to be allowed to go to go through just kind of flipping through to the end of the decision to see if there was anything else I wanted to say about that before I moved to the other, the other case. Thank not yeah, so, so the opposition that was filed by the opposer in this case was, was dismissed, and the applicant was allowed to go forward with with its application and its trademark.
Now, the other case is a case called BCD envy versus the ahas beta S aid of CV. And this again is in the trademark trial and appeal board. Another case that just came out August the sixth in this case the applicant filed Abba for single class applications seeking registration on the principal register for the mark BD, the letters B capital B capital D travel solution in in standard characters. And they also disclaimed the words travel solution. So the only part of their trademark application not disclaimed was the BD part BD travel solution. Now the existing travel the existing trademark holder, who opposed the application post registration was they are mark had BCD travel, BCD travel, and both the service goods and services that were that the applicant had, and that the opposer had were both travel agency travel related services.
So it was fairly clear and pretty easy to resolve that, that the goods and services were similar or odd or identical. So the only question was whether a BD travel solution and BCD travel were confusingly similar. And essentially there, it was it was a analysis of the BD versus the BCD and the court I’m sorry, the trout TTAB, the trademark trial and appeal board made a point that people’s memory when they look at trademarks may be a little hazy, may not be perfect. And so it might be easier to confuse BD and BCD. And, and that, that’s kind of an interesting point that if you’re looking at whether something is confusingly similar, you, you take, you may take into account when you have arbitrary letter combinations and trademarks that people may just not have perfect memory.
In fact, I say in light of the fallibility of human memory you must you, the court that the board had to look at the marks in light of that fallibility of human memory, rather than comparing them side-by-side and saying BD is clearly different than BCD. And when they took into account the closeness of the, of the, of the marks BD versus BCD, and also took into account the fallibility of human memory they came to the conclusion that the two marks B D travel solution and the already registered Martin BCD travel were confusingly similar. And so they upheld the trademark examining attorney’s denial of trademark ability in this case. And so and the opposition, I’m sorry, in this case, it was an opposer, not rather than a an issue dealing with the trademark examiner, the, the TTAB upheld the opposition of the opposer to the application.
And so the trademark application was not going to be able to go forward. So what does all this tell you? Well, it tells you a number of things. One is that when you get ready to do a trademark application, you need to make sure not only that your mark doesn’t have a an existing mark out there would be in conflict with it directly or indirectly, but you need to also take into account the subtleties of whether or not an existing mark could be deemed to be confusingly similar. So it’s not, for example, it wouldn’t be wouldn’t be sufficient if you had a mark like BD to just look at the other marks that have BD in it, you may need to look at other acronyms, other combination of letters that sounds similar, like BCD, which makes the task a little more difficult and also makes it a little more challenging to kind of ferret out what marks might be deemed confusingly similar.
It’s just, it shows that the difficulty sometimes of doing an analysis and also I’ll also in the front and coming up with a great trademark that you’re not going to run into an opposer who might claim that your market’s confusingly similar to theirs. That is why the very strongest marks that any applicant can come up with are totally fanciful marks that are made up words, made up phrases that don’t relate to anything else. And so that limits the ability of some, opposers someone out there popping up and saying that your mark is confusing, like similar to, to theirs. Now, what are some of the well-known fanciful marks while you have probably the best known fanciful mark, I would say is Google. That is a totally made up word. And that was a great made up word.
Kodak was another. So I would say always be on the lookout when you’re coming up with a trademark that you may end up having an opposition to your mark. If someone claims your mark is confused, when only similar to theirs, you may also just have a trademark examiner refusing your trademark and saying that it’s confusingly similar to another trademark. So if you can err on the side of coming up with something unique, something that’s fanciful rather than taking something like an acronym and using that as a trademark. Okay. That’s it for today. I hope this helps they have any questions. Please feel free to reach out to me, Dan Smith, at DPS Legal Counsel. Thanks.