How can I register my trademark if someone is already using a similar one? IN RE: GUILD MORTGAGE

A trademark is a word, phrase or symbol that tells consumers who is selling a product. The key feature of a trademark is the association consumers make between the trademark and products produced by a company. In the United States, when a company begins branding products that it sells with a trademark the company is automatically granted some rights to the trademark. Registration of a trademark is not required to start using a trademark in commerce in the United States but registration grant a trademark owner additional rights. For example, federal registration of a mark gives rise to the legal presumption that the registrant is in fact the trademark owner. Federal registration also allows a trademark owner/registrant the ability to file a lawsuit related to the mark in the federal court system.

Section 2(d) of the Lanham Act provides that the United States Patent and Trademark Office may refuse to register a trademark if it so resembles a prior used or registered mark “as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive.” 15 U.S.C. § 1052(d). Whether a likelihood of confusion exists is determined using the factors set out in In re E.I. DuPont DeNemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973). The DuPont factors are a list of thirteen factors that the United States Patent and Trademark Office and courts in the United States will consider when determining if there is a likelihood of confusion between two trademarks.

This means that it is important for a trademark applicant to be prepared to explain how their trademark is different than similar trademarks which are already registered. If a trademark applicant can explain why there is not a likelihood of confusion then it is still possible to register a trademark even when there are other similar trademarks already registered.

A case which illustrates how a trademark owner can use the DuPont factors to disprove a likelihood of confusion is IN RE: GUILD MORTGAGE COMPANY, 2017-2620 (C.A.F.C 2018) The United States Patent and Trademark Office refused to register the trademark due to a likelihood of confusion between Guild’s trademark and “GUILD INVESTMENT MANAGEMENT”, a trademark registered in International Class 36 for “investment advisory services,” owned by an investment company in California, Guild Investment Management. The trademark examiner at the United States Patent and Trademark Office concluded there was a likelihood of confusion based on her findings that the marks, nature of the services, and trade channels were similar. The applicant appealed the examiner’s decision and argued that DuPont factor eight, concurrent use without evidence of actual confusion, weighed in favor of the applicant.

The Trademark Trial and Appeal Board affirmed the findings of the examiner, concluding that, those factors outweighed the Trademark Trial and Appeal Board’s finding that consumers “may exercise a certain degree of care in investing money, if not perhaps in seeking a mortgage loan.” The Trademark Trial and Appeal Board did not consider the evidence for DuPont factor eight because the only evidence submitted was a declaration from the applicant.

The applicant appealed the Trademark Trial and Appeal Board’s decision to the Court of Appeals for the Federal Circuit. The Federal Circuit held that the examiner and the Trademark Trial and Appeal Board erred by not considering all the DuPont factors as a whole. Whether or not confusion appears likely is a decision which must be based on all of the DuPont factors. The Federal Circuit remanded the case for further proceedings consistent with the court’s ruling.

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