If you are a trademark holder and you believe that someone is infringing upon your mark, you generally need to establish two components in Court to prove that an infringement occurred. First, you need to show that you indeed have a valid and enforceable trademark. And second, you need to convince a trier of fact (Judge or Jury) that there exists a “likelihood of confusion” between the infringer’s mark and your mark. Assuming you can demonstrate that you have a valid and enforceable trademark (often times a heavily litigated issue unto itself), this post will set forth generally the various highly fact intensive legal tests employed and factors considered by Federal Courts in assessing whether or not there is a likelihood of confusion between trademarks. Future posts will break down these factors and assess them individually.
In the 7th Circuit (Illinois, Wisconsin, Indiana), Courts generally assess the following seven factors: (1) the similarity between the marks in appearance and suggestion; (2) the similarity of the products; (3) the area and manner of concurrent use; (4) the degree and care likely to be exercised by consumers; (5) the strength of the plaintiff’s mark; (6) any actual confusion; and (7) the intent of the defendant to “palm off” his product as that of another. Autozone, Inc., 543 F.3d at 929. Courts may assign varying weight to each of the factors depending on the facts presented. Id. Moreover, whether consumers are likely to be confused about the origin of a defendant’s products or services is ultimately a question of fact. Id.; see also McGraw-Edison Co. v. Walt Disney Prods., 787 F.2d 1163, 1167 (7th Cir. 1986).
In the 2nd Circuit (New York, Connecticut, and Vermont) look to the following factors: (1) strength of the trademark; (2) similarity of the marks; (3) proximity of the products and their competitiveness with one another; (4) evidence that the senior user may “bridge the gap” by developing a product for sale in the market of the alleged infringer’s product; (5) evidence of actual consumer confusion; (6) evidence that the imitative mark was adopted in bad faith; (7) respective quality of the products; and (8) sophistication of consumers in the relevant market. Polaroid Corp. v. Polarad Electronics, Corp., 287 F.2d 492 (2d Cir. 1961); Nora Beverages, Inc. v. Perrier Group of Am., Inc., 269 F.3d 114, 119 (2d Cir. 2001).
In the 9th Circuit (California, Hawaii, Oregon, Nevada, Montana, Idaho, and Alaska), Courts consider the followingSteelkraft factors: (1) strength of the marks; (2) the similarity of the marks; (3) the marketing channels used; (4) the proximity of the goods; (5) defendant’s intent in selecting its mark; (6) evidence of actual confusion; (7) the likelihood of expansion of the product lines; and (8) the type of goods and the degree of care likely to be exercised by the purchaser. See AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348 (9th Cir. 1979).
In the Federal Circuit, the Court considers: (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 on its goods. In re E. I. du Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
Please keep an eye out for future posts discussing these factors in depth in the various Circuits.