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When a trademark examiner or a court is making the determination of whether two trademarks are too similar to cause consumer confusion, they analyze the DuPont factors. These are the 13 factors used to assess the likelihood of confusion between similar trademarks estblished in a landmark 1973 case, E.I. DuPont de Nemours & Co. v. Celanese Corp. The DuPont factors provide an organized way of assessing two trademarks. Although there are thirteen factors, the first five factors are the most important.
How similar are the trademarks?
When comparing trademarks, both their appearance (visual), sound (aural), conntation, and commrecial impression are important in the analysis.
Visual Comparison: Spelling differences may or may not be important. Courts and trademark examiners compare the visual elements, including word arrangement, font style, logos, and colors. For example, “COKE” and “KOKE” might appear somewhat similar in structure, but the difference in the initial letters creates a distinct visual impression. Stylization, such as fonts or logos, may also distinguish otherwise similar marks.
Aural Comparison: Phonetic similarities are also critical. Marks that are spelled differently yet sound similar, especially in the context of spoken advertisements or word-of-mouth communication, may lead to confusion. For instance, "Zerox" and "Xerox" are phonetically very similar and would likely to cause confusion if used for similar goods.
Connotation: This refers to the meaning behind the mark. The connotation of a mark is shaped by its context, its dictionary definition (if it includes common words), and how the public interprets it in connection with the goods or services offered. Along these lines, a foreign word that has the same meaning as an English word may be confusingly similar. The general rule is that there is a likelihood of confusion when American buyers familiar with the foreign language upon hearing the foreign word would translate it into English or would immediately recognize the English equivalent.
Commercial Impression: Commercial impression refers to the overall image that a mark conveys in the marketplace, taking into account factors such as the mark’s style, presentation, and the goods or services it represents. Even if two marks are visually or aurally similar, their overall commercial impressions may differ if they are presented in distinct ways or relate to different industries.
Types of Goods or Services
The nature of the goods or services associated with the marks is another important factor. Even if two marks are similar in appearance or sound, if they are used for vastly different products or services, confusion is less likely. Conversely, the more related the goods or services, the higher the likelihood of confusion.
Relatedness of Products: For example, two trademarks in the same industry, such as “Starlight” for beauty products and “Starbright” for cosmetic services, could lead to confusion because the consumer might assume they come from the same source.
Distinct Industries: If the products or services are unrelated, such as “Lotus” for software and “Lotus” for cars, the risk of confusion is lower because consumers typically won’t expect the same company to produce such different products.
Channels of Trade
Channels of trade refer to the various means through which goods or services are marketed, distributed, and sold. This includes retail stores, online platforms, specialized trade shows, and wholesale distributors. Courts or examining attorneys will evaluate whether the goods or services from the two marks move in similar or overlapping channels.
Same or Overlapping Trade Channels: If the goods or services bearing the two marks are sold through similar distribution channels, such as retail stores or online marketplaces, confusion is more likely. For example, if both products are sold on Amazon or at major department stores, consumers might believe the two products come from the same company.
Distinct Trade Channels: If one mark is used for a product sold exclusively through high-end boutique stores and the other through mass-market retail chains, confusion is less likely because the consumers are different. For example, luxury car brand and a budget car brand with similar marks might have different target customers.
Sophistication of the Consumer
The level of care that a target consumer takes when making purchasing decisions also impacts the likelihood of confusion analysis. For inexpensive or everyday products, consumers are less likely to scrutinize the brand name closely, which can increase the risk of confusion. On the other hand, for high-cost or specialized products, consumers are expected to take more time to make the purchasing decision and be more discerning, reducing the potential for confusion.
Strength of the Mark
The distinctiveness of the mark itself plays a critical role in the analysis. Strong, well-known marks are more likely to be protected, as they enjoy a broader scope of protection.
Fanciful or Arbitrary Marks: Marks that are inherently distinctive, like “Kodak” or “Apple” for technology, are stronger and more likely to be protected from confusion. Even small similarities with such marks may lead to a finding of confusion.
Descriptive or Weak Marks: Marks that are more descriptive of the goods or services, like “Fast Computers” for a computer store, are less protected. Confusion is less likely if the mark is weak and consumers are accustomed to seeing similar descriptions in the market.
The likelihood of confusion analysis is an important step in choosing and vetting a trademark before adopting and using it in commerce. Because this is a complex process, trademark owners should consult experienced trademark lawyers to provide guidance and advice. Please contact Wei Wei Jeang at wjeang[at]fultonjeang.com with your inquiries.
Wei Wei Jeang is recognized by her peers in the 31ˢᵗ edition of The Best Lawyers in America® for exceptional work in Patent Law and Trademark Law for 2025.
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