A rejection received for many trademarks filed with the USPTO is likelihood of confusion, meaning the applied-for mark is confusingly similar to a registered mark. Overcoming a likelihood of rejection is done by arguing and analyzing the DuPont factors , and sometimes, trademark coexistence agreements may be helpful in overcoming the rejection as part of the DuPont analysis.
What are the DuPont Factors*?
- The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression.
- 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.
- The similarity or dissimilarity of established, likely-to-continue trade channels.
- The conditions under which and buyers to whom sales are made, i.e. “impulse” vs. careful, sophisticated purchasing.
- The fame of the prior mark.
- The number and nature of similar marks in use on similar goods.
- The nature and extent of any actual confusion.
- The length of time during and the conditions under which there has been concurrent use without evidence of actual confusion.
- The variety of goods on which a mark is or is not used.
- The market interface between the applicant and the owner of a prior mark.
- The extent to which applicant has a right to exclude others from use of its mark on its goods.
- The extent of potential confusion.
- Any other established fact probative of the effect of use.
What are Trademark Coexistence Agreements?
A trademark coexistence agreement is simply an agreement between multiple parties to use a similar trademark. The agreement sets forth each party’s rights of use of the trademark, usually concerning geographic and/or goods/services limitations, to limit any possible likelihood of confusion.
A coexistence agreement is entered into when the parties feel there will be no likelihood of confusion to the consumers, nor will there be any harm to their business. The agreement can be submitted to the USPTO when responding to a likelihood of confusion rejection as part of the duPont analysis, and the USPTO will consider it. There has been increased scrutiny of coexistence agreements by the USPTO, but they do still hold some weight because it is the owners of the respective marks that are stating they feel there is no likelihood of confusion and that the parties are taking certain steps to avoid any potential likelihood of confusion.
If a likelihood of confusion rejection is received for a trademark, it is important to have an attorney review that rejection right away to determine whether a coexistence agreement is necessary. If one is necessary, the attorney can reach out to the other party(ies) and seek concurrence on the agreement and submit it with the response to the office action. Trademark office actions have a response period of six (6) months, so it is important to start communicating with the other party(ies) as early as possible to ensure there are no missed deadlines.