DuPont & Polaroid Factors: Infringement and Likelihood of Confusion

Naming a brand requires both creative thinking and an understanding of how trademark examiners and courts evaluate potential conflicts, using frameworks like the USPTO’s DuPont factors and the courts’ Polaroid factors to assess likelihood of confusion. They look at the strength and distinctiveness of existing marks, how similar two names sound or appear, whether the goods or services target the same customers, and whether an established brand might reasonably expand into a new category. Real-world confusion, overlapping marketing channels, how carefully customers make purchase decisions, and any evidence of intentional copying also carry significant weight.

Disclaimer: We are not attorneys and do not provide legal advice. We always recommend consulting an IP attorney.

Chapters

• 0:07 Introduction & Episode Overview
• 0:29 USPTO & DuPont Factors
• 1:46 Strength of the Senior Mark
• 2:16 Similarity of Marks & Proximity of Goods
• 3:46 Likelihood of Bridging the Gap
• 5:20 Marketing Channels, Purchaser Care & Intent
• 6:09 Practical Advice & Bottom Line

Transcript

Ashley Elliott (00:07):

Hello and welcome to Naming in the AI Age. I'm Ashley, and today we're talking about trademark infringement and likelihood of confusion. I want to keep this as practical as possible, what trademark examiners and judges actually look at and what founders can do to avoid trouble or namers.

(00:23):

Disclaimer, we're not attorneys. This is not legal advice, and this is for educational purposes only.

(00:29):

When you file for USPTO trademark registration, an examiner at the United States Patent and Trademark Office reviews your application using a variety of guidelines, sometimes referred to as the DuPont Factors. These factors help the examiner determine whether you can proceed with your registration and ultimately use the name in the marketplace without infringing on someone else's trademark. If it appears to infringe on another's trademark, the USPTO won't award registration. The TTAB Trademark Trial and Appeal Board also uses these factors when reviewing disputes about registration decisions. Now, if two companies end up in court battling over who gets to use a name, judges may use different frameworks. One often being referred to as the Polaroid factors. So the Polaroid factors are a framework that are given different weights based on the facts of the specific case. I just look at things like, are customers actually getting confused? Did someone copy the name on purpose? Who's been using it in commerce and for how long? Those are the kinds of questions courts pay attention to, whether you're dealing with the USPTO or you're involved in litigation, there's a lot of overlap in what gets examined. I'll walk you through some of these factors and give examples so you can see how this might play out. Strength of the senior mark, both USPTO examiners and courts care about how distinctive or famous the name used the earliest might be.

(01:46):

Think about Starbucks. It's everywhere and just about everyone knows it. If you try to register Starbucks Cafe for your coffee shop, you're likely going to get shut down fast.

(01:54):

The lesson here is that obscure words or invented names that don't mean anything in the dictionary are often helpful when registering, they're easier to register and easier to defend later. Another factor is similarity of marks. Here's where it gets a little tricky. So trademark analysis isn't just about spelling, it's about the overall impression, how the names look, sound, what they make people think of.

(02:16):

A classic example of this could be QuickPay with a QU versus KwikPay with a K, different spelling, exact same sound.

(02:23):

That's a recipe for rejection at the USPTO and confusion in the marketplace. On the flip side, QuickPay and QuickPlate sound more distinct and relate to different things. One's a payment service and the other's a restaurant. So here's a pro tip. Always say your potential names out loud. If you're just swapping a letter or two, but it sounds identical to a name already in your space, the USPTO trademark registration examiners will likely flag it. Next is proximity of the goods or services. This one is huge. Are you

(02:49):

Competing for the same customers? If you've got Bluebean Coffee Shop and there's already Bluebean Coffee Roasters, you're both after coffee drinkers,

(02:56):

So it equals a higher risk of confusion. But Bluebean Coffee versus Bluebean Cloud services, different industries, different customers, that reduces your risk. If you're competing for the same buyer's wallet for the same goods or services, both the USPTO examiner and courts may see your name as problematic, then we have likelihood the senior user will bridge the gap. And what does that mean? This one's kind of interesting because it's about what might happen in the future. Could the established brand realistically move into your market? Remember the Apple situation? The Beatles had Apple corps for their music stuff and Apple computers seemed totally separate, but then Apple launched iTunes and got into music distribution and suddenly it's not so separate anymore. Courts and the USPTO pay attention to these potential overlaps. If there's a major brand in an adjacent space that could launch into your category, you don't want to pick a name that echoes their name.

(03:46):

Another factor is evidence of actual confusion. This example is more about trade dress than the names than themselves, but it's still important to consider. We're talking about real confusion. Customers complaining to the wrong company, people tagging the wrong brand on social media. Dukes or counterfeit listings mixing things up. You've probably seen some of these cases in the news. We just did a story on Smuckers going after Trader Joe's over Uncrustables and Stanley just filed a lawsuit against five below because their Tumblrs looked so much like the signature Stanley Cups. The customers couldn't really tell them apart, regardless of the names being too similar or copycat product, packaging and design. This is the kind of marketplace confusion that can cause problems. Marketing channels used are also a factor in play here. Do you show up in the same places? Same app stores, same retailers, same social feeds.

(04:32):

If two similar names pop up both when someone searches the Apple store for the same type of app or scrolls through Amazon for the same type of product. Confusion goes way up before you commit to a name check where you'll actually appear alongside your potential competitors. Channel overlap matters to both USPTO trademark examiners and to court. Then we have type of goods and degree of purchaser care. This is about the purchase decision itself. If you're selling cheap car accessories, air fresheners, phone mounts, people grab those at the checkout without thinking too much fast decision, higher confusion risk. But if you're naming something expensive like a car people test drive, they compare specs, they talk to salespeople, they're playing close attention. Somewhat similar names are less likely to confuse someone who's out there buying a Mercedes or a Tesla because they're doing way more research on this purchase.

(05:20):

So a pro tip for that. You may be able to use a common real word as your name, even if it's already used by someone else, it is used for something totally different. For example, naming your line of paper party plates, Odyssey isn't likely to be confused with the Honda minivan with the same name. The final factor on our list today is intent. Courts really care about intent. Did the later company adopt their trade name, logo, or packaging specifically to write on someone else's coattails and still their brand equity? We often call these products dupes like the Stanley versus five Below mentioned earlier. There's a reason Christian Louboutin is very protective of those red fos courts, scrutinize, imitation and deliberate copying, and they don't look kindly on it. This is why you want to document your naming process. Keep your brainstorming docs, your AI prompts, and your dates show that you created something independently from anyone in your space.

(06:09):

Okay, so what do we do with all of this information? Here's some practical advice. First, think about going for coined or embedded names when you can. They're usually a safer bet for the USPTO of a trademark registration and easier to defend down the road. Do some basic screening before you fall in love with a name, Google it. Run a quick search in the USPTO database. Check if the domain and social handles are available. Say it out loud if you think it sounds like anything else in your space. Watch for those red flags. If your name sounds like a well-known famous brand, if it just describes what you do, if the marketplace is already crowded with all kinds of similar names, or if there's a big brand that's in an adjacent space, you probably need to pick something else. Keep records of how you developed your name, save your drafts, your brainstorming sessions and your notes. This stuff matters. If you ever need to prove that you weren't copying and before you sync some serious money into a launch or a marketing campaign, get a clearance from an attorney. It's way cheaper than rebranding later. So what's the bottom line? Naming your business or product is part creative, part legal. You can use AI to help you brainstorm ideas, but unless you're careful, it comes up with names that sound too similar to existing names in your space.

(07:15):

Don't skip the proper clearance checks. IP attorney opinions and understanding what the USPTO and courts actually care about. A strong name that allows for USPTO trademark registration and less marketplace confusion becomes a real asset as you grow.

(07:29):

Get it right from the start and you won't have to deal with the expensive legal surprises or forced rebranding down the road. That's it for today's episode of Naming in the AI Age. If you found this useful, subscribe, leave a rating or share it with someone who's been thinking about that name. Thanks for listening, and I'll see you the next time.