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The Federal Circuit discusses the standards for measuring likelihood of confusionJune 8, 2006

In a recent case, the Federal Circuit settled a trademark opposition between M2 Software and M2 Communications. An opposition is an administrative proceeding at the Patent and Trademark Office that allows the owner of a registered trademark to challenge a pending trademark application which is believed to be too similar to or would weaken their trademark. In this case, M2 Software filed an opposition to M2 Communications’ application of for a trademark. The Trademark Trial and Appeal Board (‘TTAB’) determined that confusion between the marks was not likely and therefore dismissed the opposition. M2 Software appealed this decision to the Federal Circuit. M2 Software’s trademark ‘M2’ is used for computer software for the film and music industries, whereas M2 Communication’s application for the mark ‘M2 COMMUNICATIONS’ is for interactive multimedia CD-ROMs in the field of pharmacy and medicine. To determine whether there is a likelihood of confusion in an opposition, the Patent and Trademark Office and the Federal Circuit apply the DuPont factors, named after the case that first described them. These factors include: [1] similarity of the entire mark relating to appearance, sound, connotation and commercial impression, [2] similarity and nature of the goods or services as described in the registration or application, [3] similarity of established, likely-to-continue channels of trade, [4] conditions under which sales are made, [5] fame of the prior mark, [6] number and nature of similar marks in use on similar goods, [7] nature and extent of actual confusion, [8] length of time and conditions of concurrent use without evidence of actual confusion, [9] variety of goods on which the mark is used, [10] market interface between applicant and prior mark owner, [11] extent of applicant’s right to exclude others form using the mark, [12] extent of potential confusion, and [13] facts probative of the effect of use. The Court must apply all DuPont factors that are relevant and found in the record to determine the likelihood of confusion. The TTAB determined that confusion was not likely based on five of these factors: [1] similarity of goods in question, [2] intersecting channels of trade and purchasers, [3] similarity of marks, [4] strength of its mark, and [5] M2 Communications’ intent in registering its mark. The Federal Circuit reviews the TTAB’s conclusion of no likelihood of confusion for substantial evidence, meaning that if there is substantial evidence in the record to support the TTAB’s conclusion, the Federal Circuit will affirm the decision.The Court determined that the scope of M2 Communications’ goods was outside of the scope of M2 Software’s registration, since the goods were found in separate fields. The pharmaceutical and medical fields are sufficiently distinct from the music and entertainment fields. Similarly, the channels of trade, purchase, and marketing are distinct. Further, although the M2 portion of the marks is identical, insufficient information was presented to determine that the strength of the M2 Software mark would weaken as a result of registration of M2 Communcations’ application. Finally, the Court determined that M2 Communications did not have bad intent with its application for the mark, because the mark was conceived based on the shorthand term for ‘medical marketing’ and M2 Communications was unaware of M2 Software’s mark.The Court found substantial evidence in the record to support the TTAB’s decision, and therefore affirmed the Board’s dismissal of M2 Software’s opposition to M2 Communications’ application. This case illustrates application of the DuPont factors that the Court applies in trademark oppositions in order to determine if a likelihood of confusion exists as well as what factors a trademark examiner will consider when deciding whether to grant registration of a mark. To read the complete decision, log on to

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