By: Daniel H. Bliss
Suppose you have filed a trademark application to register a trademark that identifies a source of goods/services for your business. During examination of the trademark application, the United States Patent and Trademark Office initially refused registration because of an alleged likelihood of confusion with a registered mark. What are the DuPont factors, and can you argue them in an attempt to overcome the refusal? If you do argue some of the DuPont factors must you address the same scope of similarity for these factors in a likelihood of confusion analysis? The answer is YES.
In re du Pont de Nemours & Co. established the following factors for consideration to determine whether there is a likelihood of confusion:
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” versus 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:
a. a mere “consent” to register or use.
b. agreement provisions designed to preclude confusion, i.e., limitations on continued use of the marks by each party.
c. assignment of mark, application, registration and goodwill of the related business.
d. laches and estoppel attributable to owner of prior mark and indicative of lack of confusion.
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.
In re E.I. DuPont De Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973).
In a trademark opposition under Section 2(d) of the Lanham Act, the United States Patent and Trademark Office requires a refusal of trademark registration when “confusion is likely because of concurrent use of the marks of an applicant and a prior user on their respective goods.” Application of E. I. DuPont DeNemours & Co., 476 F.2d 1357, 1360 (C.C.P.A. 1973). “Likelihood of confusion is a question of law, based on findings of relevant underlying facts, namely findings under the DuPont factors.” M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1381 (Fed. Cir. 2006). “Each of the [thirteen] DuPont factors presents a question of fact, findings with regard to which we test for substantial evidence when called into question on appeal.” Bose Corp. v. QSC Audio Prods., Inc., 293 F.3d 1367, 1370 (Fed. Cir. 2002). The Board need not consider every DuPont factor, only those “that are relevant and of record.” M2 Software, 450 F.3d at 1382.
Do the DuPont factors need to have the same scope in a likelihood of confusion analysis? In the recent case of Apex Bank v. CC Serve Corp., 2023-2143 (Decided: September 25, 2025), CC Serve Corp. (“CC Serve”) filed a trademark opposition proceeding against Apex Bank (“Apex”), who filed for registration of the word and design marks “ASPIRE BANK”. CC Serve alleged a likelihood of confusion between Apex’s marks for internet banking and CC Serve’s standard character mark, ASPIRE, used in connection with credit card services. The Trademark Trial and Appeal Board (“Board”) had found that the second Dupont factor weighed in favor of CC Serve because the there was a high degree of similarity between the parties’ services. The Board also found that the sixth DuPont factor did not weigh in favor of Apex although CC Serve had not shown that its mark has any particular commercial strength, so the Board determined that CC Serve’s mark was entitled to the normal scope of protection. The Board further found that the first DuPont factor weighed in favor of CC Serve due to the similarity between the marks. The Board concluded a likelihood of confusion and sustained the opposition. Apex appealed to the Court of Appeals for the Federal Circuit (“CAFC”).
On appeal, Apex argued that the Board erred in its likelihood of confusion analysis with respect to the second, sixth, and first Dupont factors. The CAFC considered the descriptions of each party’s services and found that substantial evidence supported the Board’s finding that the parties services were highly similar. The CAFC affirmed the Board’s findings as to the second DuPont factor.
As to the sixth DuPont factor, the CAFC found that the Board had errored. The CAFC found that when the Board has made a factual finding that the services are highly similar in its analysis of the second DuPont factor, the Board should retain the same scope in its consideration of similarity under the other DuPont factors. Thus, the CAFC vacated the Board’s findings with respect to the sixth DuPont factor and remanded the trademark opposition back for reconsideration of the appropriate scope of third-party marks eligible for consideration in view of the Board’s factual findings that parties’ services are highly similar.
As to the first DuPont factor, the CAFC found that because commercial impression informs the analysis under the first DuPont factor, the court vacated the Board’s analysis because reconsideration of the sixth DuPont factor may result in a different determination of the mark’s commercial strength or weakness and affect the overall commercial impression. Thus, the CAFC remanded the trademark opposition back to the Board for reconsideration of the first DuPont factor.
During examination of a trademark application, the United States Patent and Trademark Office may refuse registration because of an alleged likelihood of confusion with a registered mark. In response to the refusal, you can argue the DuPont factors in an attempt to overcome the refusal. However if you do argue some of the DuPont factors, these factors must be addressed with the same scope of similarity in the likelihood of confusion analysis.
