Trademark Infringement Elements Applied at the TTAB


The trademark infringement elements are referred to as the “likelihood of confusion factors” and apply differently depending upon the jurisdiction you are in. The United States Patent and Trademark Office applies the trademark infringement elements established by the In re E. I. du Pont de Nemours & Co., 476 F.2d 1357 (CCPA 1973) case, which established 13 factors to consider when deciding whether confusion is likely.

Despite the test containing 13 factors, the United States Patent and Trademark Office has repeatedly said that the two key considerations are the similarities between the marks and the similarities between the goods or services. In fact, the Trademark Trial and Appeal Board has held that these two factors can be dispositive of the likelihood of confusion question.

Not only are the similarity of the marks and similarities between the goods or services the most important factors when before the United States Patent and Trademark Office, but the interplay between these two factors is equally important. Where the goods of the applicant and cited registrant are identical or closely related, the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as would be required with diverse goods.

The Trademark Trial and Appeal Board recently decided a case where this interplay was shown. In In re DPC Pet Specialties LLC, DPC Pet Specialties sought to register the mark SAVORY ROASTERS for “pet food; pet treats.” The USPTO refused registration of this mark on the ground that it was likely to cause confusion with the prior registered mark HEARTY ROASTERS for “pet food.”

The TTAB held that while the terms SAVORY and HEARTY convey different meanings, both terms are descriptive of pet food. Accordingly the dominant term in both marks was ROASTER. And even thought the TTAB is required to evaluate the marks in their entireties, because the goods at issue were identical the small differences in meaning between SAVORY and HEARTY were insufficient to avoid a likelihood of confusion.

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