Likelihood of Confusion: What Is It?

Hello!

Today I am going to discuss the second requirement to prove trademark infringement: likelihood of confusion.  

Per my previous post, to prove trademark infringement one must show 1) priority of the trademark's use in commerce and (2) the use of similiar trademarks in commerce is likely to cause confusion among the relevant consuming public.

The courts have established an 8 part test to prove likelihood of confusion.  The court balances these 8 factors to determine if the use of two similar trademarks in commerce is causing confusion among the relevant consuming public. I will explain each factor below:

1. The strength of the mark.  Basically, how strong or distinctive is the trademark to the consuming public? The strongest marks are those that are arbitrary and fanciful.  This means that the mark does not merely suggest or describe the product or service. For example, Kodak is the trademark for a line of cameras and film.  Kodak does not suggest or describe the products: cameras and film.  However, we have come to associate Kodak as a producer of quality cameras and film.  

2. The similarity of the marks in sight, sound and meaning. For example, Victora's Secret is the trademark associated with premium lingerie.  However, another company comes along and its trademark is Vickey's Secret and this company also sells premimum lingerie.  These two trademarks are similar in sight, sound, and meaning

3. The similarity of the goods or services sold under the trademarks.  I will go back to my Victoria's Secret example.  The goods and servies sold under the trademarks, Victoria's Secret and Vickey's Secret, are so similar they are identical.

4. The similarity of the distribution channels and customers for the goods or services at issue.  Are the products being distributed by the same entities? Are the products sold in the same markets? Are both products being sold through the same channels, i.e., online, in-store, or catalog?

5. The sophistication of purchasers and the expense of the product or service at issue.  For example, frequent buyers of Ralph Lauren Purple Label would be less likely to confuse RLA Purple Label with Ralph Lauren.  The rationale is that sophisticated purchasers exercise more care when purchasing expensive items.

6. The similarity of means and methods of advertising and promoting the goods or services at issue.  Essentially, do both companies promote the trademarks through the same channels, i.e, both advertise on television, the web, or print campaigns.

7. Was the potentially infringing trademark adopted with good faith or with intent to imitate the established trademark? Per my Victoria's Secret example, clearly Vickey's Secret was adopted with the intent to imitate the established trademark Victoria's Secret.

8. Whether there is evidence of actual confusion of consumers or other relevant groups.  Actual evidence of confusion can be established by customer surveys; diverted internet traffic; and lost sales.

Alliance Metals, Inc. v. Hinley Indust. Inc.

It is important to note that if you discover that another trademark is infringing on your priority trademark right, it is in your best interest to action.  If you do not take action, you can suffer dilution of your brand, lost profits, and lose your trademark rights.  Yes you can lose your trademarks rights.  

In my next post, I will discuss how one loses their trademark rights.  I hope this information was helpful.  If you have any further questions, please leave a comment or contact me via email.