TMEP 1306.05(g): Likelihood-of-Confusion Search and Analysis

This is the October 2015 Edition of the TMEP

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1306.05(g)    Likelihood-of-Confusion Search and Analysis

When comparing marks in a typical §2(d) likelihood-of-confusion analysis, terms that are geographically descriptive of the relevant goods or services are sometimes given less weight. See TMEP §§1207.01(b)(iii), 1207.01(b)(ix). However, as indicated in TMEP §1306.05(d), a registered certification mark containing a geographic designation that functions to certify regional origin is not considered geographically descriptive. See §15 U.S.C. §1052(e)(2) (barring registration of any mark that is primarily geographically descriptive of goods or services, but providing an exception for indications of regional origin). Rather, it is treated as if it is distinctive because it serves to designate and certify the particular geographic origin of the relevant goods or services. Consequently, a registered geographic certification mark should not be considered “weak” or subject to a narrower scope of protection. See Institute Nat’l Des Appellations d’Origine v. Brown-Forman Corp., 47 USPQ2d 1875, 1889-91 (TTAB 1998).

Furthermore, the likelihood-of-confusion analysis is generally the same for certification marks as it is for trademarks or service marks, in that all of the relevant du Pont factors should be considered. See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 1361-62, 177 USPQ 563, 567 (C.C.P.A. 1973); In re Accelerate s.a.l., 101 USPQ2d 2047, 2049 (TTAB 2012); Motion Picture Ass’n of Am. v. Respect Sportswear, Inc., 83 USPQ2d 1555, 1559 (TTAB 2007); Brown-Forman Corp., 47 USPQ2d at 1891; TMEP §1306.04. However, because a certification mark may not be used by the owner of the mark, but is instead used by authorized users, the analysis is based on the authorized users’ goods or services and their relevant trade channels and classes of consumers. See TMEP §1306.04.

The following guidelines, which focus on the similarity-of-the-marks du Pont factor, are provided to aid the examining attorney in considering the issues when a likelihood-of-confusion search and analysis involves a geographic certification mark. The facts and evidence will vary in each application, affecting the relevance and weight of the various du Pont factors. But, for the purposes of these guidelines, assume that any other relevant du Pont factors, including the relatedness of the parties’ goods and services, either support a finding that source confusion is likely or otherwise do not outweigh the factors that support such a finding.