The U.S. The Trademark Office determines whether there is a likelihood of confusion between two trademarks at the examination level as well as the trial and appeal levels. Following the 1973 In re E. I. du Pont de Nemours & Company decision, the Trademark Office has used a multifactor test — nicknamed the “du Pont factors” — to compare trademarks for confusing similarity.
The primary du Pont considerations are the similarity of the marks, the similarity of the goods or services on which the marks are being used or will be used, and the conceptual and commercial strength of the senior mark. But the most elusive of the du Pont factors is number 13, “any other established fact probative of the effect of use.”
Although the concept of a 13th du Pont factor existed for many years, it did not take its most-recognized form until 2012, when the Trademark Office’s Trademark Trial and Appeal Board established a “prior registration” framework that applicants could use to counterbalance the authority of Trademark Office to examine each application without regard to any prior registrations
The 13th du Pont factor was revealed as a result of an angry applicant who later filed an appeal, like most Board rules governing the Trademark Office’s review of applications. Strategic Partners, Inc. obtained a federal trademark registration for its In 2006, Anywears was a footwear brand. The 2006 registration was a standard character mark registration, which covered the words generally rather than a specific stylization of the words.
Several years later, Strategic Partners filed an application for a stylized version of its Anywear brand (without an S), also for footwear, in the same manner as many brand owners attempting to strategically build a trademark portfolio over time. Chills may have set in when the 2009 application was refused as likely to cause confusion with Natori Company’s registration for “Anywear by Josie Natori” for clothing, issued in 2004.
Strategic Partners argued that if Natori Company’s registration was a non-issue in 2006 vis-a-vis the broad standard character mark application for “Anywears,” it should not have become an issue in 2009 vis-a-vis a stylized mark application that was legally narrower in scope.
In response, the examiner cited the Trademark Office rule that “prior decisions and actions of other trademark examining attorneys in registering different marks have little evidentiary value and are not binding upon the Office,” and the application looked destined for the crypt. However, Strategic Partners appealed to the Trademark Office’s Trademark Trial and Appeal Board without being alarmed by the examiner.
Citing an “unusual situation,” the The application from Strategic Partners was rejected by the board due to three crucial facts. First, the Board determined that despite the letter S being removed from the end of the newer mark, the Anywear and Anywears marks were very similar. Second, the Board found that both the 2006 “anchor” registration and the 2009 application identified the same types of goods, footwear. Third, the 2006 anchor registration was already more than five years old at the time of the Board’s 2012 decision.
By statute, Natori Company could no longer attempt to cancel the more-than-five-years-old “Anywears” registration based on a likelihood of confusion with the “Anywear by Josie Natori” registration. So, notwithstanding the identical “Anywear” component of the “Anywear” application and “Anywear by Josie Natori” registration and the relatedness of footwear and clothing, the Board of Directors’ In re Strategic Partners, Inc. decision held that the “prior registration” was a dispositive probative fact that The prior rights of Natori Company would not be significantly impacted by Strategic Partners’ registration of Anywear in a stylized form. As a result, Strategic Partners’ novel appeal was successful, and its application was accepted.
The Trademark Office swiftly added a discussion of the Strategic Partners decision to its Trademark Manual of Examining Procedure, memorializing a three-pronged test for determining whether the 13th du Pont factor is applicable: (1) whether the applicant’s prior registered mark is the same as the applied-for mark or is otherwise not meaningfully different; (2) whether the identifications of goods or services in the application and the applicant’s prior registration are identifiably similar.
The test, notably, did not state whether the registrations were issued in the same order, i.e., whether the party seeking a new registration must have originally registered its “anchor” mark before the conflicting mark, had any bearing on the applicability of the 13th du Pont factor. But considering Natori Company’s registration for “Anywear by Josie Natori” pre-dated Strategic Partners’ anchor registration for “Anywear,” it logically followed that the order of registrations was not necessarily material.
The Board was repeatedly asked to overturn a Trademark Office examiner’s decision to refuse to use this test in the years that followed. The Board often disagreed with the examiner’s strict interpretation of the third prong of the test, ruling that flexibility is actually required. For instance, the Board determined that 18 months of coexistence between the appellant’s AXION anchor registration and a third party’s AXEON registration was sufficient time to apply the 13th du Pont factor to the appellant’s new AXION application, which had been rejected based on the AXEON registration, in its 2021 In re 1872 LLC decision.
Because the rejected application was for a standard character mark and the anchor registration was for a stylized mark with a design element (the opposite of the application and registration in Strategic Partners), the Board had a lot of leeway when applying the 13th du Pont factor.
In the 2015 Board decision In re Allegiance Staffing, the third prong was put under a lot of pressure. The appellant obtained a registration for “Allegiance Staffing” in 2001. The registration accidentally expired in 2012 due to the appellant’s negligence. Between 2001 and 2012, a slew of registrations for “Allegis” marks issued. And when the appellant reapplied to register “Allegiance Staffing” just 13 days after its registration inadvertently expired, the new application was refused based on six registrations and two applications.
The Board applied the 13th du Pont factor even though the anchor registration had expired and allowed the re-application to move forward despite the six cited registrations and two cited applications.
It is not uncommon for brand owners to omit conducting a fresh trademark search for the underlying words when filing applications to reflect updated stylizations and designs of an already-registered mark. Therefore, a brand owner may be caught off guard by a likelihood-of-confusion refusal involving a well-known trademark. In some of those cases, the 13th du Pont factor can be the ultimate “treat” to counteract an unexpected “tricky” refusal. Therefore, when responding to these unforeseen refusals, brand owners and trademark attorneys would be wise to take into account the legend of the 13th du Pont factor.
For Westlaw Today and Reuters Legal News, Joel Feldman regularly contributes a column on copyright and trademark law.
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