After a protracted process between Mahindra/ROXOR and FCA/Jeep, the trade dress issues have been addressed, clearing the way for ROXOR’s 2021 model redesign. “The ITC Administrative Law Judge ruled in Mahindra’s favor late last week in regards to our 2021 redesign,” says Rich Ansell, Vice President Marketing, Mahindra Automotive North America. “Here’s the statement we’re issuing. We’ll have no further comment at this time.”
“We are gratified that the Administrative Law Judge (ALJ) at the International Trade Commission has determined that the redesigned 2021 ROXOR does not infringe the “Jeep Trade Dress” claimed by FCA. The ALJ is recommending that the Commission confirm these findings and modify the orders previously issued in this dispute to reflect they do not cover the 2021 ROXOR design.
We will now look forward to the International Trade Commission’s confirmation of the ALJ’s recommendation.”
Bottom line? At the end of a 30 page decision, the Administrative Law Judge Cameron Elliot concluded: “Mahindra sufficiently shows that its Post-2020 ROXOR is not substantially similar to the Jeep Trade Dress, that the degree of similarity is otherwise very low, that its intent in designing the Post-2020 ROXOR weighs against a finding of likelihood of confusion, and that the survey evidence weighs slightly against such a finding. On balance, even considering those DuPont factors unchanged from the FID, and giving particular weight to the notable and obvious dissimilarity between the Post-2020 ROXOR and the Jeep Trade Dress, Mahindra has shown that there is no likelihood of consumer confusion as to origin, sponsorship, or approval. Accordingly, it is my recommended determination that the limited exclusion order and cease and desist orders be modified so as to not apply to Mahindra’s Post-2020 ROXOR vehicle. This Recommended Determination is hereby certified to the Commission.
What Are The DuPont Factors?
The “DuPont Factors” referenced in Judge Cameron’s order determine if there is a likelihood of consumer confusion as to origin, sponsorship, or approval due to similarity between the asserted Jeep Trade Dress and Mahindra’s Post-2020 ROXOR, by evaluating the relevant factors enumerated in In re E.I. DuPont DeNemours & Co., 476 F.2d 1357 (C.C.P.A. 1973) (“the Dupont factors”). The Dupont factors are:
(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 purchasing;
(5) The fame of the prior mark (sales, advertising, length of use);
(6) The number and nature of similar marks in use on similar goods;
(7) The nature and extent of any actual confusion;
(8) The length of time during and conditions under which there has been concurrent use without evidence of actual confusion;
(9) The variety of goods on which a mark is or is not used (house mark, “family” mark, product mark);
(10) The market interface between applicant and the owner of a prior mark;
(11) The extent to which applicant has a right to exclude others from use of its mark;
(12) The extent of potential confusion, i.e., whether de minimis or substantial; and
(13) Any other established fact probative of the effect of use.
Stay tuned!