Westchester Women's Bar Association

Trade Channels and Likelihood of Confusion

There are numerous grounds upon which an Examining Attorney at the United States Patent & Trademark Office may refuse registration of a trademark application. One of the most common reasons is a likelihood of confusion with a trademark in a registration or a prior filed pending application (should it register). The reasoning behind a 2(d) refusal is that a consumer encountering the applicant's mark could be confused, mistaken, or deceived as to the source of the goods or services of the applicant and registrant. This determination is made on a case by case basis, and the factors set forth in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 1361 177 USPQ 563, 567 (C.C.P.A. 1973) aid in this determination. This page will focus on the third du Pont factor, the similarity or dissimilarity of established and likely to continue trade channels.

When drafting an identification of a trademark application, an applicant needs to consider if it will restrict the nature of the goods and services, the trade channels, or the classes of purchasers. Under trademark law, certain presumptions may follow if no restrictions are included in the id. If the applicant does not limit or restrict the trade channels or consumer types in the identification, then there is a presumption that the goods and/or services are offered in all the normal trade channels. In each case, the Examining Attorney should introduce evidence into the record as to what "normal trade channels" are for the registrant's particular product or industry and show they overlap with the trade channels of the applicant. If the Examiner neglects to do this, an applicant can use the mistake to its advantage.

If the Examining Attorney fails to submit evidence as to what are the "normal" trade channels in a matter, and refuses registration, the Board on appeal may reverse the determination. See In re HerbalScience Group, LLC, 96 USPQ2d 1321 (TTAB 2010) [precedential]. Here, the applicant admitted that the subject goods may emanate from a single source under a single mark, but argued that the trade channels and classes of consumers were different. The applicant did not impose any restrictions in the identification. Applicant's goods are sold to manufacturers of medicinal, pharmaceutical, herbal and food products; while the registrant's goods, dietary and nutritional supplements are sold to health food stores and drug stores. The Board held that applicant's id was sufficient to show that the goods would be sold to the manufacturers of pharmaceuticals and nutraceuticals. Here, the Examiner did not submit evidence to show that the normal trade channels for dietary and nutritional supplements would be manufacturers of pharmaceuticals and nutraceuticals. Therefore, evidence of overlapping trade channels was lacking, and the Board reversed the refusal. If there are significant differences in channels of trade and classes of consumers, it is likely that there will be no opportunity for confusion.

Another case highlights this point. See In re Bentley Motors Ltd., Serial No. 85325994 December 3, 2013) [not precedential], where the Examining Attorney failed to submit evidence of the ordinary channels of trade for the registrant's goods, and failed to show that the applicant's trade channels would overlap with the registrant's. The applicant, (the luxury dealer of BENTLEY® and ROLLS ROYCE® branded automobiles) amended its identification for perfumes, cosmetics, and other goods in class 3 to restrict the trade channels to Bentley's authorized vehicle dealers and to its authorized vehicle service outlets. Keep in mind that the burden is on the Examining Attorney to show that the ordinary trade channels for registrant's goods overlap with applicant's trade channels and classes of consumers. Based on this one du Pont factor, the Board reversed the refusal as it did in In re HerbalScience Group, LLC.

In addition, remember that if the goods and/or services are held to be legally identical, another presumption will ensue, that the trade channels and classes of consumers are the same, favoring confusion. This doesn't mean that all the goods and services must be the same, but merely an overlap in one product is sufficient. In other words, likelihood of confusion must be found, if there is a likelihood of confusion involving any one item that comes within the identification of goods and services. If that does occur, and only one item is causing a likelihood of confusion, the applicant may consider deleting that one item from the id to possibly obviate the confusion. Trade channels and classes of consumers are critical factors to consider in a likelihood of confusion determination. If you have questions about trademark confusion or infringement, please contact the firm for a courtesy consultation.

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