A single DuPont factor can defeat trademark opposition
Trademark opposition proceedings often turn on the likelihood of confusion between two marks, based on an analysis of the so-called DuPont factors (named for the case in which they were first enumerated). You might think that, when the majority of the factors favor a finding of a likelihood of confusion, the opposer would prevail. But that’s not always so. In fact, a single factor that weighs against confusion could prove decisive.
Lighting the fire
Fuente Marketing Ltd. and Vaporous Technologies LLC both sell smoking-related products. Fuentes sells premium hand-rolled cigars with tobacco grown in the Dominican Republic. It owns two standard “character trademarks” for the letter X for use in connection with cigars and various cigar accessories. Because it has registered these marks, Fuente is entitled to depictions of its X marks without limitations as to font style, size or color.
Vaporous designs and manufactures oral vaporizers, otherwise referred to as vapes — battery-powered devices that simulate smoking. In 2020, it filed an intent-to-use application, seeking to register a mark consisting of an abstract stick figure composed of two diagonal intersecting lines in the shape of a wide stylized letter “X,” with a shaded circle above the letter.
Fuente opposed the application, alleging a likelihood of confusion between the mark and its own marks. The Trademark Trial and Appeal Board (TTAB) dismissed the opposition, though, after finding no likelihood of confusion, and Fuente appealed.
Filtering the factors
The U.S. Court of Appeals for the Federal Circuit has identified 13 factors for the TTAB and courts to consider when testing for the likelihood of confusion between two marks. Notably, it has repeatedly stated that the weight of each factor may vary from case to case. Moreover, a court isn’t required to consider every factor in every case.
In assessing the marks in this case, the TTAB evaluated seven relevant factors. It found two of those factors neutral. Of the remaining factors, all favored a finding of a likelihood of confusion except one — the similarity or dissimilarity of the marks. This factor weighed against a finding in Fuente’s favor.
On appeal, Fuente argued that the TTAB erred by giving decisive weight to the dissimilarity of the marks and failing to give sufficient weight to the factors favoring a likelihood of confusion. But the Federal Circuit explained that the confusion analysis is a “balancing test,” and a single factor can settle the issue, especially when the single factor is the dissimilarity of the marks.
Up in smoke
In affirming the TTAB’s ruling, the court affirmed the board’s finding that the marks differed noticeably in sound, appearance, connotation and commercial impression. In such circumstances, an opposer can’t rely on other factors to secure a ruling in its favor.
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