Determining Trademark Confusion with DuPont Factors
Forty years ago, people were dancing to Stayin Alive by the Bee Gee’s, munching on Reese’s Pieces for the first time, and watching John Travolta & Olivia Newton-John in Grease, and Jamie Lee Curtis in Halloween (the first one!). A lucky few were playing Space Invaders on their Atari 2600, or DOS-based games on their Apple II computer; and the iPhone was not yet a glint in Steve Jobs’ eye. Coincidentally, forty years ago the mark “GUILD INVESTMENT MANAGEMENT” (GIM) was being used by Guild Investment Management, Inc. for investment advisory services while the mark “GUILD MORTGAGE COMPANY” (GMC), owned by Guild Mortgage Company (Guild), was being used for mortgage banking services. Nevertheless, decades later an application for the GMC mark in International Class 36 was refused by the Examiner, who argued that there was a likelihood of confusion with the GIM mark because “the marks, nature of the services and trade channels were similar.” The Trademark Trial and Appeal Board agreed, despite finding that “consumers ‘may exercise a certain degree of care in investing money, if not perhaps in seeking a mortgage loan.’” Guild appealed to the Federal Circuit.
The court began its analysis by noting that likelihood of confusion is determined using the so-called Dupont factors, set out in In re E.I. DuPont DeNemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973). These are summarized in Table 1.
Table 1: Dupont Factors
|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 or services as 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 (sales, advertising, length of use).|
|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 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 (house mark, “family” mark, product mark).|
|10||The market interface between 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, i.e., whether de minimis or substantial.|
|13||Any other established fact probative of the effect of use.|
Guild argued that the Board’s findings as to factors 1-3 were without substantial evidence, and that the Board simply did not consider evidence submitted as to factor 8. This included the fact that both marks had coexisted for over 40 years with no actual confusion, and a Declaration by Guild’s president that no communications from Guild Investment Management, Inc. regarding infringement or confusion had ever been received. Nor had they received inquiries from consumers as to investment management services, or possible affiliation with GIM.
Ultimately, the court vacated the Board’s decision and remanded. The court found no fault in the Board’s findings as to factor 3 but concluded that it erred in that it had not considered evidence as to factor 8, and that such error was not harmless.
 Slip Op., at 2.
 Slip Op., at 3.
 Slip Op., at 4-5.
 Slip Op., at 6.
 Slip Op., at 8.
 Slip Op., at 8.
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