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The 13th DuPont Factor

Posted by James Juo | Sep 30, 2022 | 0 Comments

In a likelihood of confusion analysis under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), the thirteenth DuPont factor is a catch-all for “any other established fact probative of the effect of use.” In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973).

This thirteenth DuPont factor “accommodates the need for flexibility in assessing each unique set of facts.” In re Strategic Partners Inc., 102 USPQ2d 1397, 1399 (TTAB 2012). This includes an applicant's ownership of a previously registered mark.

In Strategic Partners, the TTAB found no likelihood of confusion with the registered mark ANYWEAR BY JOSIE NATORI and design where the applicant's previously registered mark ANYWEARS was substantially similar to the applied-for mark ANYWEAR for identical goods and had been registered for over 5 years. In this “unique situation presented by the coexistence of applicant's existing registration with the cited registration for over five years, both for identical goods.” Id.

A prior trademark registration over five years old is impervious to a petition to cancel under Section 2(d). See Trademark Act § 14, 15 U.S.C. § 1064.

Applying Strategic Partners in Gaia Herbs

Recently, the TTAB relied on Strategic Partners to reverse a Section 2(d) refusal on appeal. In re Gaia Herbs, Inc., Serial Nos. 90052133, 90052135, 90052144, and 90052150 (TTAB Sept. 26, 2022).

Gaia Herbs filed trademark applications for GAIA, GAIA HERBS, and GAIA KIDS for nutritional supplements. The applications were refused under Section 2(d) for likelihood of confusion with the standard character mark GAIA GREEN registered for “mineral supplements.”

Prior GAIA Registrations and the Thirteenth DuPont Factor

Gaia Herbs claimed ownership of prior registrations for GAIA, GAIA HERBS, and GAIA KIDS for “dietary supplements.”

          When determining whether the coexistence of an applicant's prior registration with another party's registration weighs against citing the latter registration in a Section 2(d) refusal of the applicant's mark, we consider: (1) whether the applicant's prior registered mark is the same as applicant's mark or is otherwise not meaningfully different; (2) whether the identification 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 coexisted with the registration being considered as the basis for the Section 2(d) refusal. Strategic Partners, 102 USPQ2d at 1400; TMEP § 1207.01. The duration of coexistence is not dispositive as to whether a Section 2(d) refusal should issue; instead, this factor should be considered together with all the other relevant DuPont factors. See id.; cf. Inn at St. John's, 126 USPQ2d at 1748 (finding that applicant's earlier registration of a partially similar mark was a neutral factor in the Section 2(d) analysis, because the mark in the application was more similar to the cited registered mark than applicant's previously registered mark); USA Warriors Ice Hockey Program, 122 USPQ2d 1790, 1793 (TTAB 2017) (distinguishing Strategic Partners and finding that the three and-a-half year coexistence of applicant's prior registration and the cited registration was a relevant consideration but did not cause the thirteenth factor to outweigh the other relevant DuPont factors).

          Here, all of Applicant's prior registrations identified above are over five years old, meaning that they are impervious to a petition to cancel under Trademark Act Section 2(d). See Trademark Act § 14, 15 U.S.C. § 1064. Compare In re USA Warriors Ice Hockey Program, 122 USPQ2d at 1793 (finding “a key factual distinction from Strategic Partners” that applicant's prior registration was less than five years old, making it still subject to a cancellation action by registrant based on likelihood of confusion).

Noting that “the marks subject to Applicant's claimed prior registrations are identical to the marks it now seeks to register,” and that the goods listed in Applicant's prior registrations are identical in-part; the TTAB found that the thirteenth DuPont factor “heavily favors” finding confusion not likely.

[A]lthough the first, second, and third DuPont factors weigh in favor of finding likelihood of confusion, we nevertheless find, as in Strategic Partners, that the thirteenth DuPont factor tips the scale and outweighs them all, making confusion unlikely under the specific facts of this case.

Thus, the TTAB reversed the Section 2(d) refusal where the USPTO had permitted the cited registration to issue over Applicant's prior registrations for identical marks and in-part identical goods.

Analogous to Morehouse Prior Registration Defense

The thirteenth DuPont factor in this instance was analogous to the equitable Morehouse defense in inter partes proceedings such as an opposition (but not in an ex parte appeal). See Morehouse Mfg. Corp. v. J. Strickland and Co., 407 F.2d 881, 160 USPQ 715 (CCPA 1969).

Based on the ownership of a prior registration, the Morehouse defense is premised on the theory that “[a]n opposer cannot suffer damage, . . . by the issuance of a registration if the applicant for such registration already owns an unchallenged registration of that mark for the same goods.” The Place for Vision, Inc. v. Pearle Vision Center, Inc., 218 USPQ 1022, 1023 (TTAB 1983); O-M Bread, Inc. v. U.S. Olympic Comm'n, 65 F.3d 933, 36 USPQ2d 1041, 1045 (Fed. Cir. 1995) (“the opposer cannot be further injured because there already exists an injurious registration”).

However, “Morehouse requires that the marks be essentially the same rather than merely confusingly similar – a more stringent requirement than might be necessary to support a likelihood of confusion claim.” Green Spot (Thailand) Ltd. v. Vitasoy Int'l Holdings Ltd., 86 USPQ2d 1283, n.9 (TTAB 2008); Mag Instrument Inc. v. Brinkmann Corp., 96 USPQ2d 1701, 1711 (TTAB 2010) (finding Morehouse defense unavailable where registered mark MAGNUM MAX was not substantially the same as applied-for mark MAGNUM MAXFIRE). Thus, “[i]n order for the Morehouse doctrine to apply, whatever injury opposer may have sustained or may sustain from the registered mark cannot be increased by registration of a second mark.” Green Spot, 86 USPQ2d at 1287.

Because the Morehouse defense “only applies when one already owns a virtually identical registration,” and is rarely successful at the TTAB, the TTABlog's John Welch has called it a “Toothless Tiger.”

The trademark attorneys at Thomas P. Howard, LLC enforce and defend trademarks nationwide including in Colorado.

About the Author

James Juo

James Juo is an experienced intellectual property attorney. He has successfully litigated various intellectual property disputes involving patents, trademarks, copyrights, and trade secrets. He also has counseled clients on the scope and validity of patent and trademark rights.


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