A very common question that we receive is, “What is the difference between a use-based trademark application and an intent-to-use trademark application?” In fact, we get this question so often that I have decided to write up this blog post highlighting the differences between the two, and some pros and cons for each.
While this seems like a simple question that should have a straightforward answer, the true analysis involved a multi-factor test where each factor must be evaluated separately, and then after each factor-specific analysis is performed, those analyses must be viewed collectively, or “in the totality of the circumstances.” After the collective analysis, a determination as to whether a “likelihood of confusion exists” can be made.
There may be significant changes coming to fair use law. The 2nd Circuit is very influential in the field of copyright law, and this case is no exception. That the Supreme Court has chosen to weigh in on where the lines are drawn with respect to the nature of transformative use suggests that changes are on the way for fair use.
Context: We have an interesting free speech/trademark case this time. Steve Elster attempted to register the phrase “TRUMP TOO SMALL” under IC25 at the USPTO. Apparently, according to Elster, this phrase was taken from the 2016 presidential debate, from a particular exchange between Donald Trump and Marco Rubio. The intention of this phrase was to thus “convey[] that some features of President Trump and his policies are diminutive.”
While this seems like a simple question that should have a straightforward answer, the true analysis involved a multi-factor test where each factor must be evaluated separately, and then after each factor-specific analysis is performed, those analyses must be viewed collectively, or “in the totality of the circumstances.” After the collective analysis, a determination as to whether a “likelihood of confusion exists” can be made.
When comparing whether a “likelihood of confusion” exists between two trademarks, a multi-factor test is employed. While each jurisdiction has a specific set of factors that get used, the United States Patent and Trademark Office (USPTO) uses the factors set forth in In re E.I. du Pont de Nemours & Co so these “likelihood of confusion” factors are commonly referred to as the “DuPont Factors.”
