IP: Are trade channels really that important, and did the theory of reverse confusion die?

The Board typically gave the least amount of weight to the similarity of trade channels – until In re Bentley Motors Ltd.

Trademark attorneys typically explain to clients, when discussing whether or not to oppose another parties’ trademark application, that the Trademark Trial and Appeal Board has adopted a seven-factor test to analyze whether consumers are likely to be confused. These factors include similarity of marks, similarity of goods and services, similarity of trade channels, sophistication of the consumers, fame of the mark, third party use, and actual confusion. This multi-factor test is not a rigid scorecard. It is merely a balancing test used by the Board. No factor is dispositive, and varying weight may be given to each factor based on the circumstances.

When pressed, however, the attorney will often admit that the Board tends to give more weight to some factors then to others. The similarity of the marks, the similarity of the goods and services, third party use, third party use, and actual confusion tend to get the most weight. The factor that the Board typically gives the least amount of weight to is the similarity of trade channels. That was typically the case – until In re Bentley Motors Ltd.

Contributing Author

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Scott Slavick

Scott Slavick is a shareholder at Brinks Gilson & Lione, where his practice focuses primarily on trademark prosecution and trademark litigation. Scott maintains all aspects...

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