The USPTO’s “Two Key Considerations” Framework Has a Problem

Every Section 2(d) Office Action starts the same way:

“In any likelihood of confusion determination, two key considerations are the similarities between the marks and the similarities between the goods and/or services.”

It sounds like settled law. It isn’t.

I traced that sentence back to every authority the Office cites for it — Sunkist Growers, Stratus Networks, Han Beauty, *i.am.symbolic, In re Embiid*. Not one of them says what the Office claims.

Sunkist Growers uses “such as” — illustrative, not mandatory. Stratus Networks directs findings on each relevant factor — the opposite of a two-factor threshold. In re Embiid evaluated seven factors, not two.

The DuPont framework doesn’t rank factors. It derives weight from facts. The “two key considerations” formulation does the opposite — it assigns priority before a single piece of evidence is weighed.

That’s a mechanical rule. And DuPont, Mighty Leaf Tea, and Jimenez all prohibit mechanical rules.

The TTAB has already proven this framework wrong. In YMF Carpets, the Board reversed despite identical goods. In ATMAX, third-party use and consumer sophistication outweighed relatedness. Those outcomes can’t exist under a per se two-factor hierarchy. They happened because the Board applied the actual standard — full-record, factor-by-factor, no pre-ranking.

I wrote the full argument — every cited authority examined, every doctrinal deficiency laid out, and a case for why the USPTO should retire this formulation entirely.

👉 Read the full article here: The Flaws in USPTO’s Trademark Analysis Framework

Roland Dorotheo · Trademark Administrator