US Trademark – Likelihood of confusion

When applying for a trademark the examiners may issue an office action which is quite common. The refusals may be minor or major. Major office action refusals like likelihood of confusion require a US licensed attorney to draft an argument in favor of the rejected trademark.

Du Ponte factors 

A likelihood of confusion is issued by the examiner on a case by case basis. It is given when the examiner believes the registered mark is likely to cause consumers confusion, mistake, or deceit as to the commercial source of the goods of the parties. The office action will provide the cited mark(s) that are causing an issue against the SECTION 2(d) of the Lanham Act 1946.[1] In trademark law, examiners look at Du Ponte factors[2] to determine likelihood of confusion although all may not be present. They are:

  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 . . . 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” vs. careful, sophisticated purchasing.
  5. The fame of the prior mark.
  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 the 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.
  10. The market interface between the applicant and the owner of a prior mark.
  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.
  13. Any other established fact probative of the effect of use.


Common analysis

Generally, the following two factors are taken into consideration when analyzing a likelihood of confusion trademark case:

(1) the similarities between the compared marks and

(2) the relatedness of the compared goods and/or services.

Similarities are broken down into the following:

  1. Appearance
  2. Sound
  3. Commercial impression
  4. Meaning

Furthermore, examiners at the USPTO have provided the following statements after caselaw rulings:

  1. Moreover, consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark.
  2. When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services.

When applying for your trademark, keep the above factors in mind to prevent a major office action like likelihood of confusion. An example of a mark in conflict is set out below to provide a better understanding.


Applicant’s applied-for mark is: “SIDE HUSTLE TEACHERS” for “Education services, namely, providing on-line courses and tutorial sessions in the field of entrepreneurship; Educational services, namely, providing online instruction in the field of business building, secondary jobs, and entrepreneurial growth to teachers via an online website.” 

The cited registered mark is: 

“SIDE HUSTLE PRO” for “Entertainment services, namely, providing podcasts in the fields of entrepreneurship and marketing; Educational services, namely, providing resources through community forums and conducting live and on-line coaching, classes, seminars, and workshops in the field of entrepreneurship and marketing.”

The above two marks are similar marks because:

  1. Same wording ‘SIDE HUSTLE’
  2. First two words are the same ‘SIDE HUSTLE’
  3. Dominant part of the mark is the wording there is no design to obviate the similarities
  4. Broad wording is used to describe education services which encompasses all services of the type described, including registrant’s more narrow related services.
  5. no restrictions as to nature, type, channels of trade, or classes of purchasers

Therefore, the marks are similar in sound, appearance, connotation and overall commercial impression.

It is important to note that marks do not have to be identical to satisfy a likelihood of confusion refusal neither do the goods and services need to be identical, being related could still cause a likelihood of confusion refusal.

Although your mark has been refused registration, there are routes you can take to overcome the likelihood of confusion refusal. If the examiner refuses to accept the argument drafted by your attorney you may appeal the decision to the Trademark Trail Appeal Board, (TTAB). Also do your homework before filing the application and have a trademark search report conducted which will show which marks that can potentially cause a conflict due to similarity.

[1] The Lanham Act is the primary federal trademark statute of law in the United States.

[2] In re E.I. DuPont DeNemours & Co., 476 F.2d 1357, 1361 (CCPA 1973),

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