Law School Case Brief
In re E. I. Du Pont de Nemours & Co. - 476 F.2d 1357 (C.C.P.A. 1973)
In testing for likelihood of confusion under 15 U.S.C.S §1052(d), the following, when of record, must be considered: (1) The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression; (2) The similarity or dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use; (3) The similarity or dissimilarity of established, likely-to-continue trade channels; (4) The conditions under which and buyers to whom sales are made, i.e. "impulse" vs. careful, sophisticated purchasing; (5) The fame of the prior mark (sales, advertising, length of use); (6) The number and nature of similar marks in use on similar goods; (7) The nature and extent of any actual confusion; (8) The length of time during and conditions under which there has been concurrent use without evidence of actual confusion;(9) The variety of goods on which a mark is or is not used; (10) The market interface between applicant and the owner of a prior mark: (a) a mere "consent" to register or use; (b) agreement provisions designed to preclude confusion, i.e. limitations on continued use of the marks by each party; (c) assignment of mark, application, registration and good will of the related business; (d) laches and estoppel attributable to owner of prior mark and indicative of lack of confusion; (11) The extent to which applicant has a right to exclude others from use of its mark on its goods; (12) The extent of potential confusion, i.e., whether de minimis or substantial; (13) Any other established fact probative of the effect of use.
E. I. Du Pont de Nemours & Co. (“DuPont”) sought review of a decision affirming a refusal to register DuPont's mark for a cleaning agent for use on automobiles, under section 2(d) of the Lanham Act, 15 U.S.C.S. §1052(d), on the basis of likelihood of confusion with Horizon's registered mark for an all-purpose detergent. DuPont purchased Horizon's mark for the automobile-cleansing product, signing an agreement designed to avoid conflict, with Horizon giving up the use of the mark in DuPont's market and vice-versa. The examiner, aware of the assignment and agreement, nonetheless refused registration, and the board affirmed, holding that despite the agreement there was a likelihood of confusion, mistake or deception between the marks.
Was there a likelihood of confusion, mistake or deception between the marks despite the agreement between DuPont and Horizon?
The appellate court held, after reviewing the entire record, that confusion was not likely. The court reasoned that the assignment of the mark and agreement was more than mere consent and that DuPont’s application was rejected without proper consideration of all the evidence, including the agreement.
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