Will my trademark be accepted?

Your lawyer’s favorite answer seems to be, “it depends.” Trademark registration is at the discretion of the USPTO, but we can help minimize the risk of denial by conducting an exhaustive analysis of your intended trademark.

Du Pont Factors

The USPTO reports that, “Trademark Act Section 2(d) prohibits registration of an applied-for trademark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties.  Likelihood of confusion is determined on a case-by-case basis by applying the factors set called the “du Pont factors”.  Any evidence of record related to those factors need be considered; however, not all of the Du Pont factors are relevant or of similar weight in every case.

 Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services.”

The full list of du Pont factors include:

1.      The similarity or dissimilarity of the marks in their entireties as to appearance, sound,     connotation, and commercial impression.

2.      The similarity or dissimilarity and nature of the goods . . . described in an application or registration or in connection with which a prior mark is in use.

3.      The similarity or dissimilarity of established, likely-to-continue trade channels.

4.      The conditions under which and buyers to whom sales are made, i.e. "impulse" vs. careful, sophisticated purchasing.

5.      The fame of the prior mark.

6.      The number and nature of similar marks in use on similar goods.  

7.      The nature and extent of any actual confusion.

8.      The length of time during and the 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.

10.  The market interface between the applicant and the owner of a prior mark.

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.

13.  Any other established fact probative of the effect of use.

In re E.I. du Pont de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973)

After a trademark examiner reviews your trademark application, a refusal will be issued if your intended mark merely resembles a registered mark as to be likely to cause confusion to consumers based on the above factors.

Trademark Analysis Services:

Want to ensure your mark is a good candidate for trademark registration? Head over to my services page for your trademark analysis here.