The Sixth Du Pont Factor - Commercial and Inherent Strength or Weakness
In a likelihood of confusion analysis, each DuPont factor for which there is evidence and argument must be considered. See M2 Software, Inc. v. M2 Commc’ns., Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006); In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019). The two central considerations are the similarities between the marks and/or the similarities between the goods or services. See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004). However, often applicants fail to make of record probative evidence of commercial and/or conceptual weakness of the cited registration. And in fact, the sixth DuPont factor can be dispositive in certain cases. See El Burro, Inc. v. Knuckle Sandwich LLC, Cancellation No. 20775933 (May 26, 2023) [not precedential].
The sixth DuPont factor, the number and nature of similar marks in use on similar goods, has been growing in importance since the decision in Juice Generation, Inc. v. GS Enterprises LLC, 115 USPQ2d 1671 (Fed. Cir. 2015) [precedential]. In fact, I recently attended a USPTO webinar hosted by administrative trademark judges from the TTAB (Trademark Trial and Appeal Board) and the judges emphasized that one of the most common pitfalls for applicants is not presenting sufficient evidence of the weaknesses in commercial strength or in conceptual strength of the cited registration.
In determining the strength of a trademark, both the inherent (conceptual) strength based on the nature of the mark itself and its commercial strength, based on the marketplace recognition value of the mark must be considered. See In re Chippendales USA, Inc., Cancellation No. 92075933 14 622 F.3d 1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010). Evidence of commercial strength or weakness can be demonstrated by submitting evidence of third-party marketplace use, for example third-party website use. When submitting this type of evidence, it is imperative that you confirm that the website evidence involves the goods or services of the cited registration. It is also important to submit a sufficient quantity of this evidence. If a term is commonly used to indicate source for the relevant goods or services, the market strength will be considerably lessened or considered commercially weak. Market strength is the extent to which the relevant public recognizes a mark as denoting a single source. Tea Bd. of India v. Republic of Tea, Inc., 80 USPQ2d 1881, 1899 (TTAB 2006).
Regarding evidence of conceptual strength or weakness, submission of third-party registrations and dictionary definitions are probative. Applicants should use precedential case law to determine how many third-party registrations should be submitted to be persuasive. For example, In Juice Generation there were 26 third-party uses or registrations of marks containing the phrase PEACE AND LOVE, in Jack Wolfskin, there were 16 examples of third-party use, and in In re Boston Juicery, LLC, Serial No. 86877537 (August 21, 2018), 12 examples of third-party use sufficed for a reversal by the TTAB. See Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671 (Fed. Cir. 2015). See Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015). Even where the goods are identical in part, trade channels overlap, and the marks share a common term, if that shared term renders the cited mark commercially weak or conceptually weak, this can be grounds for the TTAB to reverse a 2(d) refusal. See In re Moxie Inc., Serial No. 90100833 (September 28, 2022) [not precedential]. See also our blog post entitled, More Support For The Crowded Field Argument for additional supporting case law.
In conclusion, it is critical to carefully review the inherent and commercial strength and/or weakness of the cited registration when submitting responses to office actions or appealing refusals grounded on likelihood of confusion. Similar marks for related goods and services may not cause a likelihood of confusion, mistake or deception within a crowded field. See our web page entitled, Overcoming a 2(d) Refusal with the Crowded Field Argument, for more on this subject matter. If you have questions concerning a likelihood of confusion refusal, please feel free to contact the firm for a courtesy consultation.