Trademark Rules: An Overview Of The DuPont Factors

In this article, you can discover:

• How trademark law protects consumers and not businesses.
• Why avoiding consumer confusion is the primary goal of trademark law.
• Of the 13 trademark factors of consumer confusion, the most important factors are the similarity or dissimilarity of the trademarks in their entities as to appearance, sound, connotation, and commercial impression.

What Are The Main Concepts Or Ground Rules That Govern Trademark Law?

Trademark owners need to understand that trademark law benefits the consumer. It’s a consumer protection law, not a business protection law. That might lead you to think a trademark is not that important. But having a trademark is important for you as a business owner to protect your brand as much as possible within the law.

You also need to understand the court looks at your trademark from the consumer’s perspective. Trademark law originated from unfair competition law and was an anti-counterfeiting law.

As a trademark owner, avoiding consumer confusion is the primary, if not the sole goal, of trademark law. As such, if you’re talking about infringement or running up against somebody else, the court’s not going to care about your rights as a business owner nearly as much as they do about consumer rights.

What Factors Will The Court Consider In Determining Confusion For Trademark Infringement?

Actual consumer confusion is the only factor that determines the likelihood of confusion, which constitutes infringement. The primary way the courts determine consumer confusion for trademark infringement is according to the DuPont factors.

The DuPont factors were set out in the federal court case involving E. I. du Pont de Nemours and Company. The biggest factors are numbers 1 and 2 listed below, which are the similarity or dissimilarity of the trademarks in their entities as to appearance, sound, connotation (implied meaning), and commercial impression.

• Factor 1 is both appearance and sound. There is, however, a catchall of connotation (implied meaning) and a commercial impression that leaves some arguments for the applicant or litigant to work with. The biggest factor is how similar the trademarks are in sight and sound. How much do they look alike? How much do they sound alike?

• Factor 2 is the similarity or dissimilarity and nature of the goods: a.) described in an application or registration, or b.) in connection with which a prime trademark is in use. What this means is you can have two different trademarks that are exactly alike if the goods are so dissimilar that consumers would not be confused.

For example, Delta Faucets and Delta Airlines are two completely different companies, both with valid trademarks because a consumer is not going to be confused and misunderstand that the airline company might be the same as the company that installs bathroom sinks.

• Factor 3 is the circumstances. Different circumstances can yield different outcomes and different opportunities for consumer confusion.

We at Wolfe Legal Services have handled trademarks where the similarity of the trademarks and the similarity of the goods were close. In some of these cases, we were still able to get the trademark registered because other factors made the difference.

• Factor 4 is the similarity or dissimilarity of established and “likely to continue” trade channels. This refers to how the consumer encounters the product in commerce.

For example, if you have two trademarks for clothing that have relatively similar sight and sound marks. One of them sells children’s socks for $5.99, and the other one sells a shirt for $1,000. The person buying children’s socks for $5.99 is less likely to care about the trademark than the person buying the $1,000 shirt, who is going to be a more careful and sophisticated consumer by doing more research about the brand.

• Factor 5 is the fame of the prior trademark. In other words, which famous trademark has stronger rights because of the way the consumer perceives it?

• Factor 6 is the number of similar trademarks which use it for similar goods.

For example, as a former businessman, I owned a restaurant called ‘Fat Cat Slims,’ and it got rejected because the beginning part of a trademark, ‘Fat Cat,’ was the first thing the consumer encountered.

I was able to show the United States Patent and Trademark Office (USPTO) that there were dozens of other restaurants called ‘Fat Cat’ or some variation of ‘Fat Cat.’ Even though not all of the ‘Fat Cat” businesses were registered, the words were out there. Thus, there wasn’t any litigation about trademarking the name of that restaurant. It meant that ‘Slims’ was now the strongest part of the trademark and the words ‘Fat Cat’ were shown to be the part of the trademark.

• Factor 7 is when the consumer has actual confusion.

For example, this could occur when a consumer calls the wrong company asking for products that they don’t sell – because they got confused about the company. This act confirms the likelihood of confusion (because it’s actually happened).

Trademark companies have to have evidence of the length of time of actual confusion. So not only is actual confusion a factor, no actual confusion is a factor too. The question then is how long has it been that there’s been no actual confusion?

• Factor 8 is the variety of goods on which the trademark is or is not used.

Continuing to use clothes as an example, there’s a doctrine called Expansion of Goods or the reasonable field of expansion which says if you make shirts and hats, then you have some rights to make sweatshirts and pants. It’s a reasonable field for you to get into and for consumers to identify your trademark with.

If that’s the case, what these factors say in the variety of goods is which markets to be used or not used.

For example, Nike uses their swoosh on basically everything in their super famous clothing line. Another example is Reebok’s stylized X, which is used on several different kinds of goods. But, for this example, it is not on clothing. Reebok would then have a difficult time trademarking anything in a clothing line. But if Reebok only made key chains and leather belts, then the diversity of the goods might improve their ability to overcome a trademark registration rejection. That factor might be something you could use to overcome a rejection.

• Factor 9 is the market interface between the applicant and the owner of a prior trademark. The market interface is the established trade channels and the conditions under which the buyers use that channel, but it’s more specific.

1. Do the goods usually go through wholesalers?
2. Do the goods usually go through retailers?
3. Do the goods usually go through eCommerce?

A and B were written in 1997 before eCommerce, but now eCommerce is a factor too. Are customers most likely to encounter your goods in the checkout line of a grocery store or are they more likely to find them on Amazon?

• Factor 10 is the extent to which the trademark applicant has a right to exclude others from the use of its mark on their goods.

• Factors 11, 12, and 13 are “catchalls” because the extent to which you have the right to exclude others from the use of the trademark depends on the factors that came before it. This includes:
  • The extent of potential consumer confusion.
  • Any other fact probative of the effect of use.

The likelihood of consumer confusion is determined by anything else you could throw in to strengthen your argument for registering the trademark.

For more information on Concepts & Rules Governing Trademark Law, a free initial consultation is your next best step. Get the information and legal answers you are seeking by calling (615) 784-9372 today.