Cellar V. Gallis Holdings, Llc

Because Oakville Hills Cellar v. Georgallis Holdings, LLC was appealed to the Federal Circuit, the DuPont factors were applied. The Du Pont factors originated in the United States Court of Customs and Patent Appeals’ – which in 1982 became the Federal Circuit – in the 1973 case, In re E.I. Du Pont de Nemours & Co. In Du Pont, TTAB affirmed the mark’s refusal of registration since “public interest cannot be ignored, and when the goods of the parties are as closely related as those here involved, the sale under the identical mark…would be likely to result in confusion.” DuPont’s RALLY mark was used to identify an automobile wax and cleaning agent. However, Horizon Industries Corporation used “RALLY” as a mark to identify an all-purpose detergent. Du Pont bought out Horizon’s mark, the mark’s application, and Horizon’s goodwill to be used towards Du Pont’s automobile cleaning agent. To help facilitate this buyout, Du Pont and Horizon formed an agreement to establish the RALLY mark’s boundaries, which ultimately allowed Du Pont to use the RALLY mark on products “incidentally usable” in Horizon’s market.

The court came to this holding, after creating thirteen factors:
1. “The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.
2. The similarity or dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use.
3. The similarity or dissimilarity of established, likely-to-continue trade channels.
4. The conditions under which and buyers to whom sales are made, i.e. ‘impulse’ vs. careful, sophisticated