If you’re a trademark owner or planning to register for one, it’s crucial to understand the DuPont factors. They are a set of criteria used by the U.S. Patent and Trademark Office (USPTO) to register trademarks and by courts to help with trademark infringement cases.
By Michael Kondoudis, Small Business Trademark Attorney
This is our EASY guide to trademark DuPont Factors.
In this guide you’ll learn:
- Trademark Basics
- The origins of the DuPont factors
- What they are
- Why they matter & How they are used
So, if you need to learn about the DuPont factors, this guide is for you.
Let’s dive right in!
I. A BIT ABOUT TRADEMARKS
What is a Trademark?
A trademark is an exclusive right that a business or individual has to use a name, logo, slogan, or other symbol to identify products and services. Trademarks help protect a brand’s identity from competitors who may try to copy it while also preventing confusion among consumers. Trademarks protect brands.
What is a Registered Trademark?
A registered trademark is a trademark that has been registered with the United States Patent and Trademark Office (USPTO), which grants exclusive and nationwide rights to use the trademark.
How Do You Get a Registered Trademark?
You get a registered trademark by applying to the USPTO (United States Patent and Trademark Office). After registration, trademark owners may display the ® symbol to indicate it is protected by federal law.
How Does the USPTO Decide to Register a Trademark?
The USPTO decides whether to grant applications for trademark registration by assessing the “likelihood of confusion” between them and other existing trademarks. It uses the DuPont factors to make this determination.
II. THE DUPONT FACTORS
The USPTO decides whether to grant applications for trademark registration by assessing the “likelihood of confusion” between them and other existing trademarks. To do this effectively, it uses the DuPont factors. These factors represent a consistent and objective legal framework for comparing trademarks, ensuring fair decisions in the trademark registration process.
Beware: Even if two trademarks aren’t identical, they can still conflict if they are “likely to be confused.” That’s where the DuPont factors come in – they help identify potential conflicts and guide the decision-making process.
What Are the Dupont Factors?
The Dupont factors are a set of 13 criteria that the U.S. Patent and Trademark Office (USPTO) uses to assess the likelihood of confusion between trademarks. In other words, these factors help determine whether a new trademark can be registered or might infringe on someone else’s existing mark. Courts also use the Dupont factors to resolve cases of trademark infringement.
So, the USPTO uses the DuPont factors to decide whether to grant applications for trademark registration, and courts use them to answer questions of infringement.
Where Did The DuPont Factors Come From?
The DuPont factors originated from the landmark 1973 case of E.I. DuPont de Nemours & Co. v. Celanese Corp., which established their use in trademark litigation. The DuPont factors have since become one of the most commonly used tools for analyzing trademark applications.
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How Many DuPont Factors Are There?
- There are 13 DuPont factors.
Why Are The DuPont Factors Important?
The DuPont factors are THE test for whether a trademark can be registered or whether it infringes someone else’s mark. The Dupont factors are important because the trademarks can conflict (i.e., a likelihood of confusion) even if they do not match. Trademarks do not need to be identical to conflict. Instead, they just need to be confusingly similar. For example, if two companies have names that start with the same letter but contain different words, such as “Green Gizmos” and “Gorgeous Gadgets,” this could still lead to a trademark dispute.
List Of The DuPont Factors
The 13 criteria that make up the DuPont factors are:
1. Similarity or dissimilarity of marks: This factor considers how similar the two trademarks look, sound, and feel in appearance, sound, connotation, and commercial impression.
2. Nature of the goods and services: The USPTO compares the products or services associated with the trademarks determining whether they are similar or dissimilar.
3. Trade channels used: The third factor examines whether the trademarks are used in similar or different trade channels, such as retail stores, online platforms, or others.
4. Purchasing conditions: This factor evaluates the conditions under which sales are made and if the buyers involved tend to make impulse purchases or carefully consider their options before buying.
5. Fame of the existing mark: If the prior mark has a strong reputation or significant fame, it may be more susceptible to confusion with a newly proposed trademark.
6. Similar marks with similar goods: This factor takes into account the number and nature of similar trademarks used with similar goods or services in the market.
7. Actual confusion between the marks: The USPTO looks for any existing evidence of confusion between the two trademarks in question.
8. Length and conditions of concurrent use without confusion: The office considers whether the two trademarks have been used simultaneously without causing confusion for an extended period.
9. Variety of goods and services associated with the marks: The USPTO evaluates if the trademark is used or not used with a range of different products or services.
10. Market interface: This factor assesses the interactions and competitive relationship between the applicant and the owner of the existing trademark.
11. Applicant’s right to exclude others: This factor measures the extent to which the applicant has the right to prevent others from using the trademark on specific goods or services.
12. Extent of potential confusion: The USPTO tries to gauge the possible level of confusion that could arise between the two trademarks.
13. Other established facts: Any additional relevant information that could help determine the impact of trademark use is also considered.
List Of The DuPont Factors
The 13 criteria that make up the DuPont factors are:
1. Similarity or dissimilarity of marks: This factor considers how similar the two trademarks look, sound, and feel in appearance, sound, connotation, and commercial impression.
2. Nature of the goods and services: The USPTO compares the products or services associated with the trademarks determining whether they are similar or dissimilar.
3. Trade channels used: The third factor examines whether the trademarks are used in similar or different trade channels, such as retail stores, online platforms, or others.
4. Purchasing conditions: This factor evaluates the conditions under which sales are made and if the buyers involved tend to make impulse purchases or carefully consider their options before buying.
5. Fame of the existing mark: If the prior mark has a strong reputation or significant fame, it may be more susceptible to confusion with a newly proposed trademark.
6. Similar marks with similar goods: This factor takes into account the number and nature of similar trademarks used with similar goods or services in the market.
7. Actual confusion between the marks: The USPTO looks for any existing evidence of confusion between the two trademarks in question.
8. Length and conditions of concurrent use without confusion: The office considers whether the two trademarks have been used simultaneously without causing confusion for an extended period.
9. Variety of goods and services associated with the marks: The USPTO evaluates if the trademark is used or not used with a range of different products or services.
10. Market interface: This factor assesses the interactions and competitive relationship between the applicant and the owner of the existing trademark.
11. Applicant’s right to exclude others: This factor measures the extent to which the applicant has the right to prevent others from using the trademark on specific goods or services.
12. Extent of potential confusion: The USPTO tries to gauge the possible level of confusion that could arise between the two trademarks.
13. Other established facts: Any additional relevant information that could help determine the impact of trademark use is also considered.
What Are The Primary DuPont Factors?
There are three primary DuPont factors. The primary DuPont factors are (1) the similarity of the marks, (2) the similarity of the goods and services, and (3) the similarity of the channels of trade.
- Similarity of the marks: This refers to how closely the trademarks resemble each other (visually, orally, or in meaning/connotation). They don’t need to be identical – just similar enough to cause confusion.
- Similarity of goods/services: The USPTO looks at how closely related the products and services associated with the trademarks are. If they’re too similar, it may create confusion among customers.
Similarity of trade channels: This examines how the goods and services are marketed and sold. If the trademarks are used in similar channels of trade, consumers might have a hard time distinguishing between them.
Keep in mind that no single factor is decisive – the USPTO and courts must weigh each factor according to the facts of each case.
Why Are The DuPont Factors Important?
There are several reasons why understanding the Dupont factors is important for your business:
- Informed registration decisions: With the Dupont factors, the USPTO can make more informed decisions when granting trademark registration applications, relying on facts rather than opinions.
- Trademark dispute resolutions: Courts can use the Dupont factors to effectively resolve questions of trademark infringement, ensuring a more accurate and objective judgment.
- Predictability for businesses: By understanding the Dupont factors, you can choose trademarks for your business that are more likely to be registrable and not infringe on other marks, reducing potential legal headaches.
III. CONDENSED SUMMARY
The DuPont factors are among the most commonly used criteria in trademark law when evaluating the likelihood of confusion between two similar trademarks. The U.S. Patent and Trademark Office (USPTO) uses the DuPont factors to determine if there is a likelihood of confusion between two similar marks. If a trademark applications appears to be confusingly similar to another, then the USPTO will use these factors to assess the level of similarity.
The 13 DuPont factors are:
1. Similarity or dissimilarity of marks
2. Nature of the goods and services
3. Trade channels used
4. Purchasing conditions
5. Fame of the existing mark
6. Similar marks with similar goods
7. Actual confusion between the marks
8. Length and conditions of concurrent use without confusion
9. Variety of goods and services associated with the marks
10. Market interface
11. Applicant’s right to exclude others
12. Extent of potential confusion
13. Other established facts
By considering all of these factors together, the USPTO can determine if there is a likelihood of confusion between two similar trademarks and make an informed decision about whether to approve or reject the application. Ultimately, it is up to the examiner’s discretion to determine if the marks are too similar and, therefore, likely to cause consumer confusion.
The DuPont factors remain an essential element of trademark law today and serve as a valuable tool for evaluating likelihood of confusion
Final Thoughts
As a trademark owner, it’s essential to understand the DuPont factors. A thorough understanding of the DuPont factors helps you better navigate the trademark registration process and strengthens your position in potential infringement cases. Considering how these factors apply to your mark and comparing it with existing trademarks ensures that you make informed decisions when protecting your brand and pursuing legal action if needed.
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For more than twenty years, Michael Kondoudis has been the go-to trademarking expert for businesses of all shapes and sizes. Michael is a USPTO-licensed trademark and patent attorney, educator, speaker, and author of the Amazon best-seller: Going From Business Owner to Brand Owner. He is also an authority trusted by national news media on major trademark stories.
Fun Facts: Michael is a member of the Bar of the U.S. Supreme Court and an actual rocket scientist (B.S. Astronomy and Astrophysics, Indiana University 1994).