What to Do When Trademarks Are Similar: Understanding the “Likelihood-of-Confusion” Analysis

Section 2(d) of the Trademark Act prohibits the registration of a mark if it closely resembles an already registered mark to the extent that consumers are likely to be confused, mistaken, or misled about the commercial origin of the goods and/or services provided by the parties. See 15 U.S.C. §1052(d). Likelihood of confusion is determined on a case-by-case basis by applying the factors outlined in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”).

Any evidence of record related to those factors needs to be considered; however, “not all of the DuPont factors are relevant or of similar weight in every case.” In re Guild Mortg. Co., 912 F.3d 1376, 1379, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (quoting In re Dixie Rests., Inc., 105 F.3d 1405, 1406, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997)).

Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services. See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.

“[C]ontext is critical to a likelihood-of-confusion analysis.” Firebirds Int’l, LLC v. Firebird Restaurant Group, LLC, 397 F.Supp.3d 847, 862 (N.D. Tx. 2019). “The degree of similarity between marks is determined by comparing the marks’ appearance, sound, and meaning. Similarity of appearance is determined on the basis of the total effect of the designation, rather than on a comparison of individual features.” Rex Real Estate I, L.P. v. Rex Real Estate Exchange, Inc., 80 F.4th 607, 622-23 (5th Cir. 2023).

When analyzing the similarity of marks, one should “apply the ‘subjective eyeball test,’ by considering the overall impressions that the marks create, including the sound, appearance, and manner in which they are used,’ rather than comparing isolated features. Furthermore, the mere fact that two marks contain the same word does not, in itself, make the marks substantially similar.” MC3 Investments LLC v. Local Brand, Inc., 661 F.Supp.3d 1145, 1162 (N.D. Fla. 2023) (emphasis added). See Elevate Federal Credit Union v. Elevations Credit Union, 67 F.4th 1058, 1080 (10th Cir. 2023) (holding that there was not a likelihood of confusion between the marks “Elevate Federal Credit Union” and “Elevations Credit Union”); see also Local Brand, Inc., 661 F.Supp.3d at p. 1162.

As you can see, trademark law can be highly technical and confusing. It is therefore critical that you consult with a knowledgeable trademark attorney. For more assistance with trademarks, please contact one of our experienced trademark attorneys at 305-570-2208. You can also email our lead attorney Eduardo directly at eduardo@ayalalawpa.com. 

We at Ayala Law PA are passionate about helping those in legal need, so please don’t hesitate to schedule a case evaluation with us online here.

[The opinions in this blog are not intended to be legal advice. You should consult with an attorney about the particulars of your case].