Trademarks: Likelihood of Confusion

Likelihood of confusion is the fundamental test of both state common-law and statutory trademark infringement.  Trademark infringement of a federally registered trademark under the Lanham Act (32(1)(a), 15 USCA 1114(1)(a)) is defined as:

“Any person who shall, without the consent of the registrant (a) use in commerce any reproduction, counterfeit, copy or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive;… shall be liable in a civil action by the registrant for the remedies hereinafter provided.”

The term “likelihood of confusion” has long been used to describe the standard of liability for trademark infringement in actions at common law and under federal and state trademark and unfair competition statutes.  In a trademark infringement action, the paramount question is whether one trademark is likely to cause confusion with another trademark.  Therefore, the primary focus is for likelihood of confusion is consumer confusion.

Proving Likelihood of Confusion

Federal courts, state courts and the United States Patent and Trademark Office (USPTO) all use the likelihood of confusion test to measure liability in a trademark infringement action.  The likelihood of confusion test for trademark infringement is used in both common-law and also statutory infringement.  What exactly is the likelihood of confusion test?  While issues of priority, secondary meaning, assignment, and the like, may be present in some cases, the test of likelihood of confusion stripped down to its simplest form asks three basic questions:  Is a defendant’s use of the trademark likely to cause confusion?  Is defendant’s use of the trademark likely to cause mistake as to source or affiliation?  Does defendant’s use of the trademark deceive consumers?  If the answer is  “yes” to any of these questions, there may be likelihood of confusion and trademark infringement.

Consumers Must Be Confused

For trademark infringement under the likelihood of confusion test, the consumer or purchaser of the product/service must be confused.  How many consumers or purchasers must be confused?  Applicable cases describe an “appreciable” or “substantial” number of purchasers to be confused by a similar trademark for trademark infringement liability to occur.  See for example Scarves by Vera, Inc. v. Todao Imports, Ltd., 544 F.2d 1167, 192 U.S.P.Q. 289 (2d Cir. 1976) and McGregor-Doniger, Inc. v. Drizzle, Inc., 599 F.2d 1126, 202 U.S.P.Q. 81 (2d Cir. 1979).  A number of federal cases discuss what “appreciable” or “substantial” should mean, which seems to be determined on a case-by-case basis depending on the specific facts of each case.  Based on these cases, the majority of consumers being confused by two similar trademarks in the marketplace is not required and even a small number of deceived or confused consumers will suffice for likelihood of confusion.

How to Prove Likelihood of Confusion

The US Supreme Court in KP permanent Make-Up, Inc. v. Lasting Impression I, Inc. (2004) made clear in its decision that the trademark owner always bears the burden of proving likelihood of confusion.  In other words, the burden of proving likelihood of confusion rests with the plaintiff.  Through decades of case law precedent, the federal courts have developed a multi-factor test to assist in the difficult determination of whether there is or is not a likelihood (probability) of confusion.  The likelihood of confusion test, however, is not identical throughout the various federal circuits.  Most tests have about eight factors to consider and the number of factors varies slightly amount the 13 federal circuits.

Are the Goods and/or Services Related?

When the goods and/or services of the parties are not directly competitive, the question of likelihood of confusion is whether the goods and/or services are related.  In other words, are the goods and/or services of the parties related in the sense that purchasers are likely to believe that such goods ad/or services, similarly marked, come from the same company, or are somehow connected with or sponsored by the same company?

Restatement Likelihood of Confusion Factors

Trademark law sets forth a list of eight foundational factors to be considered in determining the presence or absence of a likelihood of confusion.  These eight factors can be paraphrased and summarized as follows:

• The degree of similarity between the conflicting trademarks;
• The similarity of the marketing methods and channels of distribution;
• The characteristics of the prospective purchasers and the degree of care they exercise;
• The degree of distinctiveness of the senior user’s trademark;
• Where the goods or services are not competitive, the likelihood that prospective buyers would expect the senior user to expand into the field of the junior user;
• Where the goods or services are sold in different territories, the extent to which the senior user’s designation is known in the junior user’s territory;
• The intent to the junior user; and
• Evidence of actual confusion.

All of these likelihood of confusion factors are to be considered in reaching a decision on the issue of likelihood of confusion.  However, there is no mechanical test for determining likelihood of confusion and each case must be decided by its own facts.

Refusal of Federal Registration On Basis of Likelihood of Confusion

The USPTO will refuse registration of an applied-for trademark on a likelihood of confusion basis under Section 2(d).  In other words, a USTPO examining attorney will refuse registration for an applied-for federal trademark if the examining attorney reaches the conclusion the applicant’s mark, as used on or in connection with the specified goods or services, so resembles a pending or registered mark as to be likely to cause confusion.

In the 1973 Du Pont decision, the U.S. Court of Customs and Patent Appeals (CCPA) discussed the factors relevant to a determination of likelihood of confusion. Although the weight given to the relevant Du Pont factors may vary, the following two factors are key considerations in any likelihood of confusion determination:

• The similarity or dissimilarity of the trademarks in their entireties as to appearance, sound, connotation and commercial impression;
• The similarity or dissimilarity and nature of the goods or services as described in an trademark application or trademark registration in connection with which a prior mark is in use;
• The similarity or dissimilarity of established, likely-to-continue trade channels.  Restriction of channels to avoid a 2(d) conflict.  Where the identification of goods is restricted to certain narrow channels of trade, it can avoid a finding of a likelihood of confusion with a registration for a similar mark for related goods;
• The conditions under which and buyers to whom sales are made, i.e., impulse vs. careful, sophisticated purchasing;
• The fame of the prior mark (sales, advertising, length of use);
• The number and nature of similar marks in use on similar goods;
• The nature and extent of any actual confusion;
• The length of time during and conditions under which there has been concurrent use without evidence of actual confusion;
• The variety of goods on which a mark is or is not used (house mark, family mark, product mark);
• The market interface between applicant and the owner of a prior mark: (a) a mere consent to register or use, (b) agreement provisions designed to preclude confusion, i.e., limitations on continued use of the marks by each party, (c) assignment of mark, application, registration and good will of the related business, or (d) laches and estoppel attributable to the owner of the prior mark and indicative lack of confusion;
• The extent to which the applicant has a right to exclude others from use of its mark on its goods;
• The extent of potential confusion, i.e., whether de minimis or substantial; and
• Any other established fact probative of the effect of use.  The CCPA emphasized that almost any evidence bearing on the likelihood of confusion is admissible.  The only issue will be the weight to be accorded the evidence.

Note, not all Du Pont factors will be relevant to every case.  Only those factors of relevance to each case need to be weighed and considered.