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01 Likelihood of Confusion
In the ex parte examination of a trademark application, a refusal under 2(d) is n
ormally based on the examining attorney's conclusion that the applicant's mark,
as used on or in connection with the specified goods or services, so resembles a
registered mark as to be likely to cause confusion. (See TMEP 1207.02 concerning
2(d) refusals to register marks that so resemble another mark as to be likely to
deceive, and TMEP1207.03 concerning 2(d) refusals based on unregistered marks. No
te: Refusals based on unregistered marks are not issued in ex parte examination.
The examining attorney must conduct a search of Office records to determine whet
her the applicant's mark so resembles any registered mark(s) as to be likely to
cause confusion or mistake, when used on or in connection with the goods or serv
ices identified in the application. The examining attorney also searches pending
applications for conflicting marks with earlier effective filing dates. See TME
P 1208 et seq. regarding conflicting marks. The examining attorney must place a co
py of the search strategy in the file.
If the examining attorney determines that there is a likelihood of confusion bet
ween applicant's mark and a previously registered mark, the examining attorney r
efuses registration under 2(d). Before citing a registration, the examining attor
ney must check the automated records of the Office to confirm that any registrat
ion that is the basis for a 2(d) refusal is an active registration. See TMEP 716.0
2(e) regarding suspension pending cancellation of a cited registration under 8 of
the Act or expiration of a cited registration for failure to renew under 9 of th
e Act.
Also, if Office records indicate that an assignment of the conflicting registrat
ion has been recorded, the examining attorney should check the automated records
of the Assignment Services Division of the Office to determine whether the conf
licting mark has been assigned to applicant.
In In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1
973), the Court of Customs and Patent Appeals discussed the factors relevant to
a determination of likelihood of confusion. In ex parte examination, the issue o
f likelihood of confusion typically revolves around the similarity or dissimilar
ity of the marks and the relatedness of the goods or services. The other factors
listed in du Pont may be considered only if relevant evidence is contained in t
he record. See In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 120
1, 1204 (Fed. Cir. 2003) ("Not all of the DuPont factors may be relevant or of e
qual weight in a given case, and 'any one of the factors may control a particula
r case,'" quoting In re Dixie Restaurants, Inc., 105 F.3d 1405, 1406-07, 41 USPQ
2d 1531, 1533 (Fed. Cir. 1997)); In re National Novice Hockey League, Inc., 222
USPQ 638, 640 (TTAB 1984). In an ex parte case, the following factors are usuall
y the most relevant:
The similarity or dissimilarity of the marks in their entireties as to appearanc
e, sound, connotation and commercial impression.
The relatedness of the goods or services as described in an application or regis
tration or in connection with which a prior mark is in use.
The similarity or dissimilarity of established, likely-to-continue trade channel
The conditions under which and buyers to whom sales are made, i.e. "impulse" vs.
careful, sophisticated purchasing.
The number and nature of similar marks in use on similar goods.
A valid consent agreement between the applicant and the owner of the previously
registered mark.
The Court of Appeals for the Federal Circuit has provided the following guidance
with regard to determining and articulating likelihood of confusion:
The basic principle in determining confusion between marks is that marks must be
compared in their entireties and must be considered in connection with the part
icular goods or services for which they are used (citations omitted). It follows
from that principle that likelihood of confusion cannot be predicated on dissec
tion of a mark, that is, on only part of a mark (footnote omitted). On the other
hand, in articulating reasons for reaching a conclusion on the issue of confusi
on, there is nothing improper in stating that, for rational reasons, more or les
s weight has been given to a particular feature of a mark, provided the ultimate
conclusion rests on consideration of the marks in their entireties (footnote om
itted). Indeed, this type of analysis appears to be unavoidable.
In re National Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 750-51 (Fed. Cir.
There is no mechanical test for determining likelihood of confusion. The issue i
s not whether the actual goods are likely to be confused but, rather, whether th
ere is a likelihood of confusion as to the source of the goods. In re Shell Oil
Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993), and cases cited
therein. Each case must be decided on its own facts.
The determination of likelihood of confusion under 2(d) in an intent-to-use appli
cation does not differ from the determination in any other type of application.