U.S. Trademark Law
Likelihood of confusion is a statutory basis for refusing registration of a trademark or service mark because it is likely to conflict with a mark or marks already registered or pending before the U.S. Patent and Trademark Office. After an application is filed, the assigned examining attorney will search the USPTO records to determine if such a conflict exists between the mark in the application and another mark that is registered or pending before the USPTO. The USPTO will not conduct any preliminary searches for conflicting marks before an applicant files an application and cannot provide legal advice on whether a particular mark can be registered.
The principal factors considered by the examining attorney in determining whether there is a likelihood of confusion are: (1) the similarity of the marks; and (2) the commercial relationship between the goods and/or services listed in the application.
To find a conflict, the marks do not have to be identical, and the goods and/or services do not have to be the same. It may be enough that the marks are similar and the goods and/or services related. If a conflict exists between your mark and a registered mark, the examining attorney will refuse registration on the ground of likelihood of confusion.
Likelihood of confusion is one of the elements a plaintiff must plead and prove to establish trademark infringement. Each federal circuit court of appeals has its own multi-factor test for evaluating likelihood of confusion necessary to ground a trademark infringement claim. While the articulation of the factors varies somewhat, all of the tests address the same basic types of factors. These factors include the similarity of the marks, the similarity or relationship of the respective goods and/or services, the strength (inherent and marketplace) of the asserted mark, the commonality of trade channels and advertising methods, the sophistication of purchasers, whether the accused mark was adopted in bad faith, and the existence of actual confusion.
Although no one factor is necessarily controlling, two key factors are the similarity between the marks and the proximity of the goods and/or services. Average purchasers retain only a general, rather than specific, impression of trademarks. Thus, to qualify as “similar,” marks need not be identical. Rather, the marks need only be sufficiently similar in the overall commercial impression they convey (e.g., they share sufficient similarities in one or more of the following factors: appearance, sound, or meaning). Likewise, the respective goods/services do not have to be identical or even competitive, and need only be related (e.g., they are of the same type, in the same field, used together, or marketed through the same channels of trade). Generally speaking, the more similar the marks, the less related the goods and/or services need to be to find a likelihood of confusion and the less similar the marks, the more related the goods and/or services need to be to find a likelihood of confusion.
In Scott Paper Co. v. Scott's Liquid Gold, the Third Circuit set forth the following factors to be considered:
|“||(1) the degree of similarity between the owner's mark and the alleged infringing mark; (2) the strength of owner's mark; (3) the price of the goods and other factors indicative of the care and attention expected of consumers when making a purchase; (4) the length of time the defendant has used the mark without evidence of actual confusion arising; (5) the intent of the defendant in adopting the mark; (6) the evidence of actual confusion; (7) whether the goods, though not competing, are marketed through the same channels of trade and advertised through the same media; (8) the extent to which the targets of the parties' sales efforts are the same; (9) the relationship of the goods in the minds of the public because of the similarity of function; (10) other facts suggesting that the consuming public might expect the prior owner to manufacture a product in the defendant's market.||”|
The Second Circuit, in Polaroid Corp. v. Polarad Elecs. Corp., set forth the following factors:
|“||the strength of his mark, the degree of similarity between the two marks, the proximity of the products, the likelihood that the prior owner will bridge the gap, actual confusion, and the reciprocal of defendant's good faith in adopting its own mark, the quality of defendant's product, and the sophistication of the buyers.||”|
However, while a trial court considering the likelihood of confusion must evaluate the Polaroid factors, the Second Circuit has cautioned that the Polaroid factors are not always dispositive. Moreover, courts may consider other variables in evaluating the likelihood of confusion, and irrelevant factors may be abandoned. The unique facts of each case must be considered in evaluating the likelihood of confusion.
- 15 U.S.C. §1052(d).
- "In order to succeed on the merits, a plaintiff must establish that: (1) the marks are valid and legally protectible; (2) the marks are owned by the plaintiff; and (3) the defendants' use of the marks to identify goods or services is likely to create confusion concerning the origin of the goods and services." Opticians Ass'n v. Independent Opticians, 920 F.2d 187, 192 (3d Cir. 1990) (full-text).
- See 4 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition §§ 24:30-24:43 (4th ed. 2010) (listing factors by circuit).
- 589 F.2d 1225 (3d Cir. 1978) (full-text).
- Id. at 1229.
- 287 F.2d 492 (2d Cir. 1961) (full-text).
- Id. at 495.
- Streetwise Maps, Inc. v. VanDam, Inc., 159 F.3d 739 (2d Cir. 1998) (full-text); Estee Lauder Inc. v. The Gap. Inc., 108 F.3d 1503 (2d Cir. 1997) (full-text).
- See Gruner + Jahr USA Publishing v. Meredith Corp., 991 F.2d 1072, 1077 (2d Cir. 1993) (full-text).
- W.W.W. Pharm. Co., Inc. v. Gillette Co., 984 F.2d 567, 572 (2d Cir. 1993) (full-text); Thompson Med. Co. v. Pfizer Inc., 753 F.2d 208, 214 (2d Cir. 1985) (full-text) ("[T]he complexities attendant to an accurate assessment of likelihood of confusion require that the entire panoply of elements constituting the relevant factual landscape be comprehensively examined. No single Polaroid factor is pre-eminent, nor can the presence or absence of one without analysis of the others, determine the outcome of an infringement suit.")