USPTO du Pont Factors Likelihood of Confusion

TBMP 309.03(c)(2)(B)    

The evidentiary factors the [TTAB] considers in determining likelihood of confusion are set out in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).

These factors include

1. the similarity of the marks,
2. the relatedness of the goods and/or services,
3. the channels of trade and classes of purchasers for the goods and/or services,
4. the number and nature of similar marks in use on similar goods,
5. the nature and extent of any actual confusion, and
6. the fame of the prior mark.

The relevance and weight to be given the various factors may differ from case to case and a single du Pont factor may be dispositive in certain cases.

Likelihood of Confusion Internet Factors

In cases involving claims of trademark infringement on the Internet, the Ninth Circuit has affirmed the use of an additional instruction indicating that three of the Sleekcraft factors:

(i) similarity of plaintiff’s and defendant’s mark;

(ii) relatedness of services; and

(iii) simultaneous use of the internet as a marketing channel, otherwise known as the “Internet Troika,” are of the “greatest importance.”

Internet Specialties West, Inc. v. Milon-Digiorgio Enters., 559 F.3d 985, 989 (9th Cir. 2009).

“The Ninth Circuit has since rejected the notion that the internet troika is the appropriate test in every case of internet infringement. Network Automation, Inc. v. Advanced Sys. Concepts, Inc., 638 F.3d 1137 (9th Cir.2011).” Southern Snow Mfg. Co. v. Snow Wizard Holdings, Inc., 829 F. Supp. 2d 431, 434 n.1 (E.D. La. 2011).

Calculus

When the goods produced by the alleged infringer compete for sales with those of the trademark owner, infringement usually will be found if the marks are sufficiently similar that confusion can be expected. When the goods are related, but not competitive, several other factors are added to the calculus. If the goods are totally unrelated, there can be no infringement because confusion is unlikely. AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348 (9th Cir. 1979).

First Circuit-Likelihood of Confusion Factors

In the First Circuit, the likelihood of confusion generally is determined by consideration of the Pignons factors:

(1) the similarity of the marks;

(2) the similarity of the goods (or, in a service mark case, the services);

(3) the relationship between the parties' channels of trade;

(4) the juxtaposition of their advertising;

(5) the classes of prospective purchasers;

(6) the evidence of actual confusion;

(7) the defendant's intent in adopting its allegedly infringing mark; and

(8) the strength of the plaintiff's mark.

Dorpan, S.L. v. Hotel Melia, Inc., 728 F.3d 55, 65 (1st Cir. 2013) (citing Pignons S.A. de Mecanique de Precision v. Polaroid Corp., 657 F.2d 482, 487 (1st Cir.1981)).

Second Circuit-Likelihood of Confusion Factors

(as reported in Fed. Express v. Federal Espresso, 201 F.3d 168 (2nd Cir., 1999))

The eight factors set forth in Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492, 495 (2d Cir.) ("Polaroid"), cert. denied, 368 U.S. 820 (1961), in order to determine whether there was a likelihood of consumer confusion. Those factors are:

(1) the strength of the plaintiff's mark;

(2) the similarity of plaintiff's and defendant's marks;

(3) the competitive proximity of the products;

(4) the likelihood that plaintiff will "bridge the gap" and offer a product like defendant's;

(5) actual confusion between products;

(6) good faith on the defendant's part;

(7) the quality of defendant's product; and

(8) the sophistication of buyers.  

Third Circuit-Likelihood of Confusion Factors-The LAPP Factors

The Third Circuit has identified ten factors [Lapp Factors] which should be considered in determining whether a likelihood of confusion exists:

(1) the degree of similarity between the owner's mark and the alleged infringing mark:

(2) the strength of owner'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 the defendant has used the mark without evidence of actual confusion arising;

(5) the intent of the defendant in adopting the mark;

(6) the evidence of actual confusion;

(7) whether the goods, though not competing, are marketed through the same channels of trade and advertised through the same media;

(8) the extent to which the targets of the parties' sales efforts are the same;

(9) the relationship of the goods in the minds of the public because of the similarity of function;

(10) other facts suggesting that the consuming public might expect the prior owner to manufacture a product in the defendant's market.

Taj Mahal Enterprises, Ltd. v. Trump, 745 F. Supp. 240, 247 (D.N.J. 1990))quoting Interpace Corp. v. Lapp, Inc.,721 F.2d 460, 463 (3d Cir. 1983).

Fourth Circuit-Likelihood of Confusion Factors

[The] Fourth Circuit has identified nine factors to determine if a "likelihood of confusion" exists. The nine factors include:

(1) the strength or distinctiveness of the plaintiff's mark as actually used in the marketplace;

(2) the similarity of the two marks to consumers;

(3) the similarity of the goods or services that the marks identify;

(4) the similarity of the facilities used by the markholders;

(5) the similarity of advertising used by the markholders;

(6) the defendant's intent;

(7) actual confusion;

(8) the quality of the defendant's product; and[,]

(9) the sophistication of the consuming public.

Swatch AG v. Beehive Wholesale, LLC, 739 F.3d 150, 158 (4th Cir. 2014).

Fifth Circuit-Likelihood of Confusion Factors

The Fifth Circuit sets out a "nonexhaustive" list of factors to consider when determining likelihood of confusion. These factors are:

(1) the type of trademark;

(2) mark similarity;

(3) product similarity;

(4) outlet and purchaser identity;

(5) advertising media identity;

(6) defendant's intent;

(7) actual confusion; and

(8) care exercised by potential purchasers.

Xtreme Lashes, LLC v. Xtended Beauty, Inc., 576 F.3d 221, 227 (5th Cir. 2009).

Sixth Circuit-Likelihood of Confusion Factors

In the Sixth Circuit, likelihood of confusion is determined by examining the Frisch factors:

(1) strength of the plaintiff's mark;

(2) relatedness of the goods or services;

(3) similarity of the marks;

(4) evidence of actual confusion;

(5) marketing channels used;

(6) likely degree of  purchaser care;

(7) the defendant's intent in selecting its mark; and

(8) likelihood of expansion of the product lines.

Frisch's Restaurants, Inc. v. Elby's Big Boy of Steubenville, Inc., 670 F.2d 642 (6th Cir. 1982).

Seventh Circuit-Likelihood of Confusion Factors

In the Seventh Circuit, the likelihood of confusion analysis is parsed into seven factors:

(1) the similarity of the marks;

(2) the similarity of the products;

(3) the area and manner of concurrent use;

(4) the degree of care exercised by consumers;

(5) the strength of the plaintiff's marks;

(6) any evidence of actual confusion; and

(7) the defendant's intent to palm off its goods as plaintiff's.

Promatek Indus., Ltd. v. Equitrac Corp. , 300 F.3d 808, 811 (7th Cir.2002), as amended , (Oct. 18, 2002).

No single factor is dispositive; courts weigh and balance the factors depending on the circumstances involved.

CAE, Inc. v. Clean Air Eng'g, Inc. , 267 F.3d 660, 678 (7th Cir.2001).

Eighth Circuit-Likelihood of Confusion Factors

In the Eighth Circuit, a finding of likelihood of confusion involves consideration of at least the following six factors:

(1) strength of the plaintiff's mark;

(2) similarity of the plaintiff's and defendant's marks;

(3) similarity of the products;

(4) the competitive proximity of the products;

(5) the defendant's intent; and

(6) instances of actual confusion.

See SquirtCo v. Seven-Up Co., 628 F.2d 1086, 1091, 207 USPQ 897, 900 (8th Cir. 1980) as applied in Calvin Klein Cosmetics Corp. v. Parfums de Coeur, Ltd., 824 F.2d 665, 668, 3 USPQ2d 1498, 1500 (8th Cir. 1987).

Nine Circuit Sleekcraft Factors

FACTORS RELEVANT TO LIKELIHOOD OF CONFUSION

In determining whether confusion between related goods is likely, the following factors are relevant:

1. strength of the mark;

2. proximity of the goods;

3. similarity of the marks;

4. evidence of actual confusion;

5. marketing channels used;

6. type of goods and the degree of care likely to be exercised by the purchaser;

7. defendant's intent in selecting the mark; and

8. likelihood of expansion of the product lines.

AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir. 1979)

Tenth Circuit-Likelihood of Confusion Factors

Regarding likelihood of confusion, the Tenth Circuit considers a variety of factors when making such a determination, including:

(1) the degree of similarity between the products;

(2) the intent of the alleged infringer in designing its product;

(3) evidence of actual confusion;

(4) similarity in how the products are marketed;

(5) the degree of care likely to be exercised by purchasers; and

(6) the strength of the trade dress.

General Motors Corp. v. Urban Gorilla, LLC, 500 F.3d 1222, 1226 (10th Cir. 2007) (quoting  Sally Beauty Co., Inc. v. Beautyco, Inc., 304 F.3d 964, 977 (10th Cir. 2002)). In the Tenth Circuit, likelihood of confusion is a question of fact. Id.

Eleventh Circuit-Likelihood of Confusion Factors

The Eleventh Circuit considers seven factors in determining the likelihood of consumer confusion:

(1) type of mark;

(2) similarity of mark;

(3) similarity of the products the mark represents;

(4) similarity of the parties' retail outlets and customers;

(5) similarity of advertising media;

(6) defendant's intent; and

 (7) actual confusion.

Frehling Enterprises, Inc. v. Int'l Select Group, Inc., 192 F.3d 1330, 1335 (11th Cir. 1999); Lone Star Steakhouse & Saloon, Inc. v. Longhorn Steaks, Inc., 122 F.3d 1379, 1382 (11th Cir. 1997). Also, the Eleventh Circuit has repeatedly held that the type of mark and evidence of actual confusion are the most significant considerations. Custom Mfg. & Eng'g, Inc. v. Midway Servs., Inc., 508 F.3d 641, 652, n. 10 (11th Cir. 2007); Hi-Tech Pharm., Inc. v. Herbal Health Prod., Inc., 132 Fed. Appx. 348, 350 (11th Cir. 2005).

In the Eleventh Circuit, the type of mark is one of the seven factors that the court considers when assessing the likelihood of confusion. Frehling Enterprises, Inc. v. Int'l Select Group, Inc., 192 F.3d 1330, 1335 (11th Cir. 1999). The stronger the mark, the greater the scope of protection afforded it. Id.

There are four types of marks, based on the relationship between the name and the service or good it describes: generic, descriptive, suggestive, and arbitrary. "Generic marks are the weakest and not entitled to protection—they refer to a class of which an individual service is a member (e.g., "liquor store" used in connection with the sale of liquor). Frehling, 192 F.3d at 1335. Descriptive marks describe a characteristic or quality of an article or service (e.g., "vision center" denoting a place where glasses are sold). Id. "Suggestive terms suggest characteristics of the goods and services and require an effort of the imagination by the consumer in order to be understood as descriptive." Dieter v. B&H Indus. of Southwest Fla., Inc., 880 F.2d 332, 327 (11th Cir. 1989). For instance, "penguin" would be suggestive of refrigerators. Freedom Sav. & Loan Ass'n v. Way, 757 F.2d 1176, 1182 n. 5 (11th Cir.1985)). An arbitrary mark is a word or phrase that bears no relationship to the product (e.g., "Sun Bank" is arbitrary when applied to banking services). See id. Arbitrary marks are the strongest of the four categories. Frehling, 192 F.3d at 1335.

CORD:USE Cord Blood Bank, Inc. v. CBR Sys., Inc., Case No: 6:11-cv-893-Orl-36KRS, at *7 (M.D. Fla. Nov. 4, 2012).