Perhaps the most often-cited case for addressing the key trademark infringement issue of likelihood of confusion is In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973). DuPont applied to register "Rally" for a car polish. Its application was rejected by the examiner who determined that Horizon Industries' pre-existing registration for the identical mark for use in conjunction with an all-purpose cleaner would create confusion to the consuming public. DuPont identified its field of use as the "automobile after-market" whereas Horizon's product was targeted to the "commercial building or household market". During the course of an appeal from the examiner's refusal to register, DuPont acquired from Horizon the rights to the Rally name in conjunction with automobile-related products, a trademark application that had been filed by Horizon for Rally and the good will associated with the mark in the automobile related market. The Trademark Trial and Appeal Board (TTAB) affirmed the examiner's rejection, concluding that the public interest would not be well served by registering the same mark to two different parties whose goods were closely related. DuPont appealed the decision.
The United States Court of Customs and Patent Appeals rendered its decision on May 3, 1973. It overturned the decision of the TTAB and allowed DuPont's application to mature into a registration. More importantly, however, the court identified 13 factors that must always be considered, when of record, in testing for the likelihood of confusion.
The following analysis is from a case on which I was retained as an expert witness. The names of the parties and the trademark have been changed. The Plaintiff used the name iStagecoach for an electronic device into which users could plug their iPods in order to listen to music. The Defendant has owned a federal service mark registration of iStagecoach for use with personnel / employment placement services. This analysis was prepared on behalf of that Plaintiff in the case, which sought a declaratory judgment of non-infringement. The plaintiff was were successful and its request was granted. My analysis and opinion are in parenthesis following the listing of the respective DuPont factor.)
1. The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impressions.
(In my opinion, both companies are using identical marks, iStagecoach. They are identical in appearance and sound despite the fact that they have somewhat different connotations. The letter "i" in the plaintiff's mark is intended to suggest that many of its products are compatible with Apple's iPod line of music players. The letter "i" in the defendant's mark refers to the fact that its services are delivered by via the Internet.
There are, however, many instances in which registered marks have identical spelling, appearance and sound yet still co-exist on the Register and in the marketplace because they are used on unrelated goods or services. For instance, a quick search of the USPTO database disclosed the following:
- At least 10 federal registrations for Easy Link as a trademark including Easy-Link (Reg. No. 3071182), EZLink (Reg. No. 2910460), EZ-Link (Reg. No. 2585515), Easylink (Reg. No. 3016879), Easylink (Reg. No. 2913532), and EZ Link (Reg. No. 2711754). Furthermore, there are additional registrations that contain Easy Link as part of the trademark such as EasyLink Services (Reg. No. 2914819) or AT&T Easylink Services (Reg. No. 1714196).
- Similar examples of multiple registrations of trademarks that have the same appearance, sound, connotation or commercial impression will be found for trademarks such as Genesis, Quick Connect, Infoworld, iMagic, or Data Master.
In my opinion, this test criteria does not support the defendant's claim of likelihood of confusion. The additional research that has been conducted supports my opinion that marks that are similar, even identical, in appearance and sound, can, and frequently have been, registered. Simply because their appearance and sound are identical does not necessarily mean there would be likely confusion as to the sources of particular products or services. Additionally, the two marks here under consideration, have different connotations, further indicating that the application of this test criteria does not support the defendant's claim of likelihood of confusion in the present matter.)
2. The similarity or dissimilarity of and the nature of the goods or services as described in an application or registration in connection with which a prior mark is in use.
(In my opinion, there is no similarity in the nature of the parties' goods or services. The plaintiff sells electronic devices that play music and/or which connect to and play music stored on music storage devices such as an iPod. The defendant sells employment and/or personnel services. In the DuPont case it was at least remotely possible that envision both products being sold in a single retail establishment such as a Wal-Mart or in an after-market auto parts store such as Pep Boys. However, in this instance, the defendant sells services to businesses and the plaintiff sells consumer electronics directly to the consumer or through retail merchants such as Best Buy, Sam's Club, Radio Shack or Fry's Electronics. In my opinion, this test criterion does not support the defendant's claim of likelihood of confusion in the present matter.)
3. The similarity or dissimilarity of established, likely-to-continue trade channels.
(Clearly, there is no similarity in the trade channels for the plaintiff's electronic goods and the defendant's personnel and employment services. The plaintiff sells consumer electronics either directly to the customer or through established and likely-to-continue trade channels identified previously. The defendant provides, according to its web site, "flexibility in staffing qualified professionals with efficiency and seamlessly integrating the staffing process into your daily workflow." It is clear to me that this test criterion does not support the defendant's claim of likelihood of confusion in the present matter.)
4. The conditions under which buyers to whom sales are made, i.e., "impulse" vs. careful sophisticated purchasing."
(In my opinion, a few of the plaintiff's products [such as their $39.99 headphones or their $39.99 speakers] could possibly qualify as potential impulse purchases. However, very few consumers would purchase plaintiff's $349.99 music system on impulse. I also strongly doubt that any personnel decision to retain the defendant to recruit or evaluate prospective employees would ever be made on an "impulse". In my opinion purchasers of most products from the plaintiff and all services from the defendant are "sophisticated" and "careful" and in very different fields of commerce. I do not believe this factor helps the defendant in its attempt to prove likelihood of confusion in the present matter.)
5. The fame of the prior mark (sales, advertising, length of use.)
(In my opinion, plaintiff has more "fame" associated with its use of iStagecoach than does the defendant. This opinion is supported by the data retrieved from the Dialog research and discussed earlier in this report. Although the defendant claims to have used its iStagecoach mark since 2003 and claims that is "…has made a substantial investment in the distinctive mark ‘iStagecoach'", nowhere does the defendant indicate how much it has spent in advertising and marketing its services under its mark. Given that the defendant's gross sales since inception amounts to less than $5 million, it is hard to imagine a comprehensive, nationwide advertising, marketing and sales program being promoted by the defendant. In my opinion this test criterion lends no support to the defendant's claim of likelihood of confusion in the present matter.)
6. The number and nature of similar marks in use on similar goods.
(My research uncovered an insignificant and irrelevant number of other users of iStagecoach. In my opinion this test criterion supports neither party's position.)
7. The nature and extent of actual confusion.
(I am not aware of any actual confusion with respect to the parties' respective use of the mark iStagecoach. I believe it is possible that a few consumers could have accidentally contacted [by telephone, email or web site visit] one company when seeking the other. Simple or careless consumer mistakes or errors hardly classify as "actual confusion" as to source. In my opinion it is highly unlikely that any business would purchase an iPod-compatible device for $250 or more from the plaintiff in the belief that it was hiring a new employee from the defendant. I believe it nearly impossible that there have been any incidents of actual purchasing confusion and I believe as well that there is no probability of any such actual confusion occurring in the future unless one of the parties were to dramatically change its products or services to more closely resemble those offered by the other. In my opinion, this test criterion lends no support to defendant's claim of likelihood of confusion in the present matter.)
8. The length of time during and conditions under which there has been concurrent use without evidence of actual confusion.
(As stated above, there is no evidence that there has ever been any actual purchasing confusion. The length of time during which there has been concurrent use without actual confusion is almost three years, which gives rise to a strong inference that under existing conditions no confusion will arise in the future. This test criterion does not support the defendant's claim of likelihood of confusion in the present matter.)
9. The variety of goods on which a mark is or is not used (house mark, "family" mark, product mark.)
(In my opinion, both companies use the mark iStagecoach, as their company name or a component of their company name, and to identify essentially all their goods or services. Plaintiff uses iStagecoach as the only trademark associated with at least 15 different electronic products. Defendant, since it is a service provider, does not have products with which to associate its name. It is unclear if defendant makes substantial promotional use of iStagecoach on its advertising materials, invoices, etc. in addition to the use on the Internet. In my opinion, this test criterion does not favor either party's position on the likelihood of confusion issue in the present matter.)
10. The market interface between the applicant and the owner of the prior mark.
(In my opinion, there is no such market interface, rendering this test criterion irrelevant in the present matter.)
11. The extent to which applicant has a right to exclude others from use of its mark on its goods.
(Plaintiff, the applicant, is the only known seller of similar goods under this mark. That being the case, plaintiff has the right to exclude others from using iStagecoach on competing or related goods. My opinion is that this test criterion favors plaintiff in this matter.)
12. The extent of possible confusion, i.e., whether de minimis or substantial.
(In my opinion, any possible confusion would be primarily as a result of human error. For reasons described above, it is my opinion that there is little or no chance of confusion between the personnel services offered for sale by defendant and the consumer electronic products offered for sale by plaintiff. In my opinion, this test criterion does not support the defendant's claim of likelihood of confusion in the present matter.
13. Any other established fact probative to the effect of use.
(In my opinion, this test criterion is irrelevant to the current matter.)
It is my opinion, after reviewing the thirteen DuPont factors in light of the information I previously knew combined with the information I have developed while working on this matter, that none (or possibly one) of the test criteria support the defendant's claim of likelihood of confusion in the present matter. I am further of the opinion that test criteria 2, 3, 5, 7, 8, 9 and 12 support the position that there is no likelihood of confusion in the present matter. I also am of the opinion that test criteria 4, 6, 10, and 13 are not relevant to this matter.
Based on the above analysis of the DuPont factors, a second reason for my conclusion that there is no likelihood of confusion of consumers between the registered service mark iStagecoach (for personnel services) and the trademark iStagecoach (for consumer electronic products), is that I applied the same DuPont factors as did the examiner and I arrived at the same conclusion as did the examiner. Although the marks used by the parties are essentially identical in appearance, sound and commercial impression, the goods/services promoted under those marks by the plaintiff and defendant respectively appear to be completely unrelated and the activities surrounding their marketing are such that it appears that confusion is not at all likely to occur. The parties' respective goods and services do not appear to be related in any manner whatsoever and the conditions surrounding the marketing of those products and services are such that it does not appear that the same purchasers who are targeted to receive the parties' marketing messages would mistakenly believe that the defendant's services and the plaintiff's goods come from the same source. I believe it is highly improbably that confusion exists or will ever exist between the plaintiff's and defendant's uses of the mark iStagecoach.