The Federal Circuit has recently further “clarified” the standard for likelihood of confusion in trademark registrations in Odom's Tennessee Pride Sausage, Inc. v. FF Acquisition. A trademark applicant moved for summary judgment to dismiss an opposition proceeding filed by Odom's Tennessee Pride Sausage, Inc. The Federal Circuit agreed with the Trademark Trial and Appeal Board that even a single factor out of the several usually considered for evaluating likelihood of confusion may be enough to summarily defeat an oppostion to registration.
Likelihood of confusion is usually evaluated by considering a number of factors (called the "DuPont factors"), such as extent of actual confusion, similarity in goods, and similarity in channels of trade. Here, however, the court found that visual distinctions alone created a dissimilarity between the parties’ respective marks great enough to create a differing commercial impression in the minds of consumers. This eliminated any genuine issue of material fact and thwarted any claim of a likelihood of confusion in favor of opposer Odom. The court held that even just a single DuPont factor may be dispositive on likelihood of confusion (especially the “dissimilarity of marks” factor), over other relevant DuPont factors to the contrary.
Notably, although opposer is prolific in its branding, with numerous longstanding common law and registered trademarks, it failed to plead any of its unregistered common law marks (which included additional variations in design), thus limiting the court’s decision to a consideration of the registered marks asserted by Odom before the TTAB.
There are several lessons here: (1) Visual distinctions between marks creating a different commercial impression can knock out a claim of likelihood of confusion. (2) More broadly, any one DuPont likelihood of confusion factor (dissimilarity of marks in particular) may be sufficient basis for finding no likelihood of confusion, to the exclusion of other relevant factors. (3) Finally, from the outset, one should not fail to consider asserting any unregistered variations and common law trademarks in use, in addition to the registered marks asserted, to broaden the scope of the confusion analysis before the Board or federal district court.