What Factors Are Considered for Trademark Registration?
When the USPTO takes up an application for trademark registration, they sometimes uncover a prior-registered mark that they believe is somewhat similar. When that happens, we may receive an office action that requires us to respond. Some of the arguments we’ll want to submit in the response include an analysis using what we call the the du Pont factors in the legal world, so you may see Rogue.law propose a response with arguments under the following headings:
Similarity of the Marks: The degree of similarity between the marks in terms of appearance, sound, meaning, and overall impression.
Similarity of the Goods or Services: The relatedness or similarity of the goods or services offered under the marks. Sometimes, we can re-word the listing of goods or services to avoid the listing in the prior registration.
Strength of the Prior Mark (e.g. the fame of the prior mark): The distinctiveness and commercial strength of the prior mark. A prior mark that is very famous will be given a much broader range of protection than a less famous mark, and one that is rather “descriptive” will have a very narrow range.
Similarity of Trade Channels: The overlap or similarity in the channels of trade, distribution channels, or target consumers for the goods or services. If the goods or services are never offered through the same channels of trade, the likelihood of confusion is reduced significantly.
Degree of Consumer Care: The level of attention or care exercised by consumers when purchasing the goods or services. If the goods or services are in an industry in which consumers are very careful in their decision (for example, doctors purchasing a surgical device) and unlikely to make a rash decision (like somebody quickly grabbing a drink off the shelf at a supermarket), then the likelihood of confusion is reduced.
Actual Confusion: Evidence of actual confusion among consumers, such as customer complaints or instances of mistaken identity.
Applicant’s Intent: The intent of the defendant in adopting the mark, particularly if there is evidence of an intent to deceive or infringe on the plaintiff's mark. The USPTO doesn’t like bad actors. If the applicant is intentionally trying to benefit from the goodwill or fame of the prior mark, this will not go over well.
Likelihood of Expansion: The potential for the owner of the prior mark to expand the use of its mark into related goods or services, and the likelihood of the applicant expanding into the same area. For example, the prior mark is registered for t-shirts, and the applicant’s mark is for jeans, the USPTO will likely assume each party is likely to expand into the other product line.