(October 27, 2022) - Joel Feldman of Greenberg Traurig LLP discusses the Trademark Office's evaluation of likelihood of confusion in a prior registration framework using the 13th factor in the du Pont factors.

The U.S. Trademark Office, at both the examination level and the trial and appeal levels, evaluates whether likelihood of confusion exists between two trademarks. Since the 1973 In re E. I. du Pont de Nemours & Co. decision, the Trademark Office has used a multifactor test — nicknamed the "du Pont factors" — to compare trademarks for confusing similarity.

The primary du Pont factors are the similarity of the marks, the similarity of the goods or services on which the marks are or will be used, and the conceptual and commercial strength of the senior mark. But the most elusive of the du Pont factors is number 13, "any other established fact probative of the effect of use."

Although the concept of a 13th du Pont factor existed for many years, it did not take its most-recognized form until 2012, when the Trademark Office's Trademark Trial and Appeal Board established a "prior registration" framework that applicants could use to counterbalance the Trademark Office's authority to examine each application independent of prior registrations.

Like most Board rules governing the Trademark Office's examination of applications, the 13th du Pont factor's revelation began with an aggrieved applicant turned appellant. Strategic Partners, Inc. obtained a federal trademark registration for its Anywears footwear brand in 2006. The 2006 registration was a standard character mark registration, meaning that it covered the words in general and not a particular stylization of the words.

Like many brand owners trying to strategically build a trademark portfolio over time, several years later, Strategic Partners filed an application for a stylized version of its Anywear brand (without an S), also for footwear. Chills may have set in when the 2009 application was refused as likely to cause confusion with Natori Company's registration for "Anywear by Josie Natori" for clothing, issued in 2004.

Strategic Partners argued that if Natori Company's registration was a non-issue in 2006 vis-a-vis the broad standard character mark application for "Anywears," it should not have become an issue in 2009 vis-a-vis a stylized mark application that was legally narrower in scope.

In response, the examiner cited the Trademark Office rule that "prior decisions and actions of other trademark examining attorneys in registering different marks have little evidentiary value and are not binding upon the Office," and the application looked destined for the crypt. Unspooked by the examiner, however, Strategic Partners appealed to the Trademark Office's Trademark Trial and Appeal Board.

Citing an "unusual situation," the Board spared Strategic Partners' application based on three key facts. First, the Board found that the Anywear and Anywears marks were substantially similar, even though the letter S was dropped from the end of the newer mark. Second, the Board found that both the 2006 "anchor" registration and the 2009 application identified the same types of goods, footwear. Third, at the time of the Board's 2012 decision, the 2006 anchor registration was over five years old.

By statute, Natori Company could no longer attempt to cancel the more-than-five-years-old "Anywears" registration based on a likelihood of confusion with the "Anywear by Josie Natori" registration. So, notwithstanding the identical "Anywear" component of the "Anywear" application and "Anywear by Josie Natori" registration and the relatedness of footwear and clothing, the Board's In re Strategic Partners, Inc. decision held that the "prior registration" was a dispositive probative fact that Strategic Partners' registration of Anywear in a stylized form would not materially affect Natori Company's prior rights. As a result, Strategic Partners prevailed on its novel appeal and its application was approved.

The Trademark Office promptly added a discussion of the Strategic Partners decision to its Trademark Manual of Examining Procedure, memorializing a three-prong test for evaluating the applicability of the 13th du Pont factor: (1) whether the applicant's prior registered mark is the same as the applied-for mark or is otherwise not meaningfully different; (2) whether the identifications of goods or services in the application and the applicant's prior registration are identical or identical in relevant part; and (3) the length of time the applicant's prior registration has co-existed with the registration being considered as the basis for the likelihood-of-confusion refusal.

Notably, the test did not specify whether the order in which the registrations issued, i.e., whether the party seeking a new registration must have originally registered its "anchor" mark before the conflicting mark, had any bearing on the applicability of the 13th du Pont factor. But considering Natori Company's registration for "Anywear by Josie Natori" pre-dated Strategic Partners' anchor registration for "Anywear," it logically followed that the order of registrations was not necessarily material.

In the following years, the Board has been asked several times to reverse a Trademark Office examiner's refusal to apply this test. In many instances, the Board reversed the examiner's rigid interpretation of the third prong of the test, holding that the test requires flexibility. For example, in its 2021 In re 1872 LLC decision, the Board held that 18 months of coexistence between the appellant's AXION anchor registration and a third party's AXEON registration was a sufficient length of time to apply the 13th du Pont factor to appellant's new AXION application, which had been refused registration based on the AXEON registration.

The Board's application of the 13th du Pont factor was especially flexible because the refused application was for a standard character mark and the anchor registration was for a stylized mark with a design element (the reverse direction of the application and registration in Strategic Partners).

The third prong was especially pressure tested in the Board's 2015 In re Allegiance Staffing decision. The appellant obtained a registration for "Allegiance Staffing" in 2001. The appellant inadvertently allowed the registration to expire in 2012. Between 2001 and 2012, a slew of registrations for "Allegis" marks issued. And when the appellant reapplied to register "Allegiance Staffing" just 13 days after its registration inadvertently expired, the new application was refused based on six registrations and two applications.

Even though the anchor registration had expired, the Board still applied the 13th du Pont factor and allowed the re-application to proceed notwithstanding the six cited registrations and two cited applications.

When brand owners file applications to reflect updated stylizations and designs of an already-registered mark, it is not uncommon for the brand owner to forgo a new trademark search for the underlying words. Accordingly, a likelihood-of-confusion refusal relating to a longstanding trademark can often catch a brand owner by surprise. In some of those cases, the 13th du Pont factor can be the ultimate "treat" to counteract an unexpected "tricky" refusal. So, brand owners and trademark attorneys are wise to consider the legend of the 13th du Pont factor when responding to these unexpected refusals.