B.    Likelihood of Confusion

The evidentiary factors the Board considers in determining likelihood of confusion are set out in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). These factors include the similarity of the marks, the relatedness of the goods and/or services, the channels of trade and classes of purchasers for the goods and/or services, the number and nature of similar marks in use on similar goods, the nature and extent of any actual confusion, and the fame of the prior mark. [ Note 1.] The relevance and weight to be given the various factors may differ from case to case and a single du Pont factor may be dispositive in certain cases. [ Note 2.]

Direct or Hypothetical Pleading of Likelihood of Confusion: A plaintiff may plead likelihood of confusion directly or hypothetically. [ Note 3.] A hypothetical pleading may consist of assertions that if, as the trademark examining attorney (or the defendant) contends, plaintiff’s mark so resembles defendant’s mark as to be likely, when applied to the goods and/or services of the plaintiff, to cause confusion, then plaintiff will be damaged by the registration of defendant’s mark. [ Note 4.] Of course, in order to state a claim upon which relief can be granted, a hypothetical pleading of likelihood of confusion must be coupled with a pleading of one or more grounds for opposition or cancellation, such as, that defendant’s mark has been abandoned; that plaintiff has priority of use (here, the hypothetical pleading of likelihood of confusion serves both as a pleading of plaintiff’s standing and as part of the pleading of a ground under Trademark Act § 2(d), 15 U.S.C. § 1052(d) ); etc. Thus, a plaintiff wishing to plead likelihood of confusion hypothetically in a proceeding based upon Trademark Act § 2(d), 15 U.S.C. § 1052(d)  might assert, for example, that if, as the trademark examining attorney (or the defendant) contends, plaintiff’s mark so resembles defendant’s mark as to be likely, when applied to the goods and/or services of the plaintiff, to cause confusion, then the registration sought by defendant should be refused (or defendant’s registration should be cancelled) because plaintiff has priority of use. [ Note 5.]

Reverse Confusion:"Reverse confusion" does not have to be specifically pleaded so long as the plaintiff asserts that the respective marks are so similar as applied to the respective goods or services as to be likely to cause confusion. [ Note 6.]

NOTES:

 1.   See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See, e.g., Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En, 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (to determine whether the marks are similar for purposes of assessing the likelihood of confusion, the Board will consider the appearance, sound, connotation and commercial impression of each mark); Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002) (the nature and scope of a party’s goods or services must be determined on the basis of the goods or services recited in the application or registration); The North Face Apparel Corp. v. Sanyang Industries, Inc., 116 USPQ2d 1217, 1225 (TTAB 2015) (no context provided for figures in support of fame; burden of proving fame not met); Anheuser-Busch, LLC v. Innvopak Systems Pty. Ltd., 115 USPQ2d 1816, 1820-21 (TTAB 2015) (fame of mark proved, which weighs heavily in likelihood of confusion finding); Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000).

See also Research in Motion Limited v. Defining Presence Marketing Group Inc., 102 USPQ2d 1187, 1194 (TTAB 2012) (likelihood of confusion found based on evidence relevant to factors bearing on issue for certain classes of goods but not for one class of goods); Brown Shoe Co. v. Robbins, 90 USPQ2d 1752, 1756 (TTAB 2009) (doctrine of foreign equivalents not applied where both marks were Spanish words); Giersch v. Scripps Networks Inc., 90 USPQ2d 1020 (TTAB 2009) (no likelihood of confusion found upon consideration of relevant factors); H.D. Lee Co. v. Maidenform Inc., 87 USPQ2d 1715, 1723 (TTAB 2008) (the Board will not take judicial notice that items of outerwear and undergarments are related items for purposes of determining whether parties’ goods are related); Fort James Operating Co. v. Royal Paper Converting Inc., 83 USPQ2d 1624, 1626 (TTAB 2007) (unnecessary to prove likelihood of confusion with respect to all goods set forth in application); B.V.D. Licensing Corp. v. Rodriguez, 83 USPQ2d 1500, 1505 (TTAB 2007) (fame); Truescents LLC v. Ride Skin Care LLC, 81 USPQ2d 1334, 1342 (TTAB 2006) (dissimilarity of marks dispositive); Tea Board of India v. Republic of Tea Inc., 80 USPQ2d 1881, 1897 (TTAB 2006) (test for determining likelihood of confusion with respect to certification mark based on comparison of the mark as applied to the goods of the certification mark users); Teledyne Technologies Inc. v. Western Skyways Inc., 78 USPQ2d 1203, 1206 (TTAB 2006) aff’d unpub’d, 208 Fed. Appx. 886, 887 (Fed. Cir. Dec. 6, 2006) (several factors considered); DC Comics v. Pan American Grain Manufacturing Co., 77 USPQ2d 1220, 1228 (TTAB 2005) (whether adoption of mark was in bad faith); Alfacell Corp. v. Anticancer Inc., 71 USPQ2d 1301, 1306 (TTAB 2004) (likelihood of confusion in pharmaceutical context); Time Warner Entertainment Co. v. Jones, 65 USPQ2d 1650, 1657 (TTAB 2002); Baroid Drilling Fluids Inc. v. Sun Drilling Products, 24 USPQ2d 1048, 1052-53 (TTAB 1992) (family-of-marks).

 2.   See Odom’s Tennessee Pride Sausage, Inc. v. FF Acquisition, LLC, 600 F.3d 1343, 93 USPQ2d 2030, 2032 (Fed. Cir. 2010) (Board did not err in basing its decision on dissimilarity of marks alone); Shen Manufacturing Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004) ("Neither we nor the board, however, need consider every duPont factor"); Opryland USA Inc. v. The Great American Music Show Inc., 970 F.2d 847, 23 USPQ2d 1471, 1473 (Fed. Cir. 1992); Kellogg Co. v. Pack’em Enterprises Inc., 14 USPQ2d 1545 (TTAB 1990), aff’d, 951 F.2d 330, 21 USPQ2d 1142 (Fed. Cir. 1991). See also Herbko International Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1378 (Fed. Cir. 2002); Boston Red Sox Baseball Club LP v. Sherman, 88 USPQ2d 1581 (TTAB 2008) (dissimilarity of marks dispositive); Mattel Inc. v. Funline Merchandise Co., 81 USPQ2d 1372, 1374 (TTAB 2006) (key considerations are similarities between the marks and goods recited in both parties’ registrations); Truescents LLC v. Ride Skin Care LLC, 81 USPQ2d 1334, 1342 (TTAB 2006) (dissimilarity of marks dispositive); and Sports Authority Michigan Inc. v. PC Authority Inc., 63 USPQ2d 1782, 1800 (TTAB 2001).

 3.   See Fed. R. Civ. P. 8(d)(2).

 4.   See John T. Clark Co. v. Colgate-Palmolive Co., 176 USPQ 93 (TTAB 1972); Revco, D.S., Inc. v. Armour-Dial, Inc., 170 USPQ 48, 49 (TTAB 1971). Cf. Taffy’s of Cleveland, Inc. v. Taffy’s, Inc., 189 USPQ 154, 156 (TTAB 1975) (fact that petitioner argued before examining attorney that its mark and that of respondent were not confusingly similar does not preclude petitioner from asserting likelihood of confusion as ground for cancellation); Lia Jene Inc. v. Vitabath, Inc., 162 USPQ 469, 470 (TTAB 1969) (representations made by petitioner in attempting to overcome reference to secure its own registration cannot estop petitioner from taking a different position in proceeding to cancel such registration).

 5.   See Humana Inc. v. Humanomics Inc., 3 USPQ2d 1696, 1698 (TTAB 1987) (applicant could have raised priority issue in a counterclaim by pleading likelihood of confusion hypothetically notwithstanding the inconsistency of that pleading with its position in the opposition that the marks are not confusingly similar); Home Juice Co. v. Runglin Cos., 231 USPQ 897, 899 (TTAB 1986) (pleading construed as hypothetical pleading of likelihood of confusion which is appropriate where petitioner’s standing is based on its inability to secure a registration, notwithstanding that it is the senior user, because the subject registration has been cited as a reference by the examining attorney). See also Central Garden & Pet Co. v. Doskocil Manufacturing Co., 108 USPQ2d 1134, 1150 (TTAB 2013) (Board did not consider hypothetical question of likelihood of confusion sought by senior party); Taffy’s of Cleveland, Inc. v. Taffy’s, Inc., 189 USPQ 154, 156-57 (TTAB 1975) (fact that petitioner argued before examining attorney that its mark and that of respondent were not confusingly similar does not preclude petitioner from asserting likelihood of confusion as ground for cancellation); Revco, D.S., Inc. v. Armour-Dial, Inc., 170 USPQ 48, 49 (TTAB 1971) (in seeking to cancel on ground of abandonment, plaintiff asserted proper hypothetical pleading of likelihood of confusion as its basis for standing).

 6.   See Top Tobacco LP v. North Atlantic Operating Co., 101 USPQ2d 1163, 1175 n.18 (TTAB 2011); American Hygienic Laboratories Inc. v. Tiffany & Co., 12 USPQ2d 1979, 1983 n.7 (TTAB 1989).