103 Iowa L. Rev. 367 (2017)
Download PDF


Circuit courts are split on how much deference should be given to a United States Patent and Trademark Office (“USPTO”) trademark likelihood-of-confusion determination during litigation under Lanham Act section 43(a)(1)(A). While some courts afford a substantial amount of deference to the USPTO’s findings regarding a likelihood of confusion when it refuses to register a mark on the principal register, other courts afford little to no deference to the USPTO’s findings regarding a likelihood of confusion. This disparity among courts outlines a need for a solution that best fulfills the goals of the various courts in order to create a unified precedent of deference. By analyzing each court’s approach as to how much deference to give and by taking a closer look into the deference given to USPTO patent determinations, this Note proposes that USPTO likelihood-of-confusion determinations receive a presumption of validity in subsequent litigation. A challenger can rebut this when (1) a USPTO examiner failed to consider or was unaware of relevant evidence; (2) an examiner’s actions were arbitrary and capricious; or (3) there exists evidence of unfair prejudice. This solution better fulfills efficiency than reasonable alternatives, and in an overarching effort to create homogeny, better creates a uniform precedent of deference.

Wednesday, November 15, 2017