This page addresses the Dupont Factors which are considered the primary trademark infringement test. The fundamental concept of trademark infringement is a pretty straightforward to grasp. If consumers are likely to be confused between two trademarks, then it is likely that trademark infringement exists.
As with any other area of intellectual property law, though, there are nuances to this rule and complexities to federal statutes. When making a judgment on the likelihood of confusion, for instance, it’s not necessary that actual consumer confusion take place. That said, actual consumer confusion is the best evidence of trademark infringement. Even if there’s no reported occurrence of individuals mistaking one product for another, the courts may still decide that use of a similar trademark warrants an trademark injunction and possible damages.
The fact that actual confusion need not occur is likely why there are so many trademark litigation cases filed every year. In fact, there are about 4,000 infringement cases filed in federal courts each year. The Dupont factors lay a framework for determining trademark infringement.
Trademark Infringement Test
While there are a variety of factors that can be considered in determining a likelihood of confusion, 13 primary Dupont factors were outlined in the case of In re E.I. du Pont de Nemours & Co. These 13 factors are utilized by the Federal Circuit to determine a likelihood of confusion. The 13 Dupont Factors are:
- The similarity or dissimilarity of each trademark in question. This includes appearance, connotation, commercial impression and auditory resemblance.
- The similarity or dissimilarity of the nature of the goods or services.
- The similarity or dissimilarity of established trade channels that are likely to continue.
- The type of consumer that makes the purchase and the conditions under which they do so.
- The prior trademark’s level of recognition and fame.
- How many similar trademarks are being used on similar products? What’s their nature?
- Has actual confusion occurred? What’s the nature and extent?
- How long has concurrent use occurred and under what conditions with a lack of actual confusion?
- The variety of goods or services that use the trademark.
- The market interface between the two trademarks.
- The level of exclusionary rights.
- The extent of any potential confusion.
- Other facts that can show there’s been an effect due to concurrent use.
Each circuit apart from the federal circuit has created its own set of factors. In the 9th Circuit which covers California and other western states, courts use the Sleekcraft Factors. In AMF, Inc. v. Sleekcraft Boats, the court’s final decision laid out eight factors to deliberate when judging the likelihood of confusion.
- Strength of the trademark: Does the senior trademark have market strength? Is it distinctive, generic or arbitrary?
- Goods/Services proximity: Are similar trademarks being used on competing products? What about related products that aren’t competing?
- Trademark similarity: Are the trademarks similar in any way? Do they appear or sound the same?
- Evidence of confusion: Can instances of actual consumer confusion be shown?
- Marketing channels: Are the promotional methods used similar with both products? Are the businesses similar? Courts may even consider whether the goods are located near each other in a grocery store.
- Customer vigilance: What is the likelihood that consumers will be confused when exercising ordinary caution?
- Intent of defendant: Did the alleged infringer intend to create a likelihood of confusion?
- Market expansion: Could either party expand their business into new markets? Could the eventual expansion create consumer confusion?
Dupont Analysis – Trademark Infringement Examples
These are just a few examples of trademark infringement cases.
L’Oreal SA and L’Oreal USA Inc. v. Robert Victor Marco
Robert Marco began producing aloe vera drinks under the name L’Oreal Paris. A prior trademark existed for a cosmetic and beauty product line. While these offerings may seem different enough to avoid confusion, the fact that the senior trademark holder offered products featuring aloe vera was considered enough to cause a likelihood of confusion.
AutoZone Inc. v. Strick
The names Oil Zone and Wash Zone were found to create a likelihood of confusion when compared to the brand AutoZone. Oil Zone offered oil changes and Wash Zone offered car washes, while AutoZone sells retail auto parts. While these businesses are obviously in related industries, there was more to this decision.
Courts found that the use of the word “Zone” in a two-word term along with utilizing the same font and slant in the letters added to the confusion. Even the capitalization and bar design in each of the marks was considered when deciding similarities.
Design trademark – American Rice Inc. v. Producers Rice Mill Inc.
“Girl Design” and “Girl With a Hat Design” were both used in relation to the sale of rice. One trademark was an Asian girl while the other was a girl wearing a scarf or hat. Even though there were dissimilarities in the trademarks at issue, the courts found that a likelihood of consumer confusion existed.
Both the trademarks had a young girl holding a bowl of rice with a similar color scheme. It eventually came down to the fact that the image of a girl isn’t intrinsic to rice products.
Edom Laboratories, Inc. V. Lichter
A tea promoted as having a medicinal purpose was named Super Chiro Tea. The courts decided that it was confusingly similar to a detoxifying tea known as Chiroklenz. While most wouldn’t confuse these two names, Super Chiro Tea also utilized trade dress that was similar to its competitor.
TMEP Likelihood of Confusion
For trademark applications, the Trademark Manuel of Examining Procedure sets out the basis on which a trademark application will be refused due to a likelihood of confusion, mistake or deception.
If you’re involved in a trademark infringement matter or have a question about the Dupont Factors, please feel free to contact us.