What Are Likelihood of Confusion Factors?

Likelihood of confusion factors are the legal standards used to determine whether trademark infringement has occurred. The factors are also used as one of several tests conducted by the United States Patent and Trademark Office (USPTO) to determine whether a trademark application is approved.

The likelihood of confusion test is used to decide if a trademark is likely to be confused with another trademark. 

The Role of a Trademark Attorney

The attorney that is examining the trademark needs to do a search of the USPTO records to find out whether the applicant's mark is similar to any other registered mark that may cause confusion or mistake if it is used on or in connection with the same type of goods or services as the other mark in the application.

The attorney also needs to search any pending applications to see if there are conflicting marks that have earlier filing dates. Any similar marks that are found need to have a copy placed in the record of the new application.

If the examining attorney finds that there is a likelihood of confusion between their client's mark and any previously registered marks, then they need to refuse the registration of the applicant's mark.

Before citing a registration, the examining attorney needs to look at the automated records in the USPTO to make sure that any registration that is given a §2(d) refusal is an active registration. 

Eight Factors for Likelihood of Confusion

In order to determine the likelihood of confusion, the USPTO looks at these eight factors. These factors are sometimes called the Polaroid Factors after the case of Polaroid Corp v. Polarad Elecs. Corp in 1961. They are also called the DuPont factors after their use in the E. I. DuPont de Nemours & Co case in 1973.

1. Strength of the Senior Mark

The senior trademark is the one registered or used first. The more distinctive the mark is, the more protected it is. Courts measure distinctiveness using five categories.

a. Generic - If a word or symbol describes the product instead of distinguishing between competing version of the product then it may be considered generic. These types of marks are never distinctive and no trademark protection is given.

b. Descriptive - If the words or symbols describe the ingredients, qualities, features, purpose, or characteristics of a product, then they are likely not considered distinctive. The only way the mark is distinctive is if it acquires a secondary meaning that consumers recognize as being from that particular company.

c. Suggestive - These types of marks suggest qualities of the underlying product but require you to use your imagination to figure out the nature of the product. These marks are distinctive and receive trademark protection.

d. Arbitrary - Arbitrary marks are names that exist in popular vocabulary but have no relationship to the products for which they are used. For example, Apple is trademarked because it has nothing to do with fruit, yet it is a word that we all know as something else.

e. Fanciful - Fanciful marks are terms invented for the sole purpose of serving as trademarks. These have no association at all with the product being used. These are inherently distinctive and are the strongest marks that a company can have.

2. Relatedness of the Products

Relatedness means that the two products in question have the potential to be connected in the minds of the consumer. 

  • If the products compete directly and the marks are sufficiently similar, then confusion is likely.
  • If the products are somewhat related but not competitive, then other factors determine the likelihood of confusion.
  • If the products are totally unrelated, then confusion is unlikely.

3. Similarity of the Marks

This is one of the most important factors in an infringement case. The court looks at the pronunciation of the mark, its appearance, and the verbal translation of the conflicting marks. It looks to see if the mark would confuse the public when viewed in isolation. With this factor, the mark is viewed in its entirety, not by its individual features.

4. Evidence of Actual Confusion

If a company can show that there has been actual confusion, this is a very strong argument. This proof is direct evidence that the products and marks have enough similarities to create confusion among consumers. 

5. Marketing Channels Used

Courts assess the similarity of trademarks in the way that they are encountered in the marketplace and the situation surrounding their purchase. Evidence for this factor can be the market that the two products are sold in, the type of business the marks are used for, the way that the products are advertised, and where in the store you might find the two products.

6. The Degree of Purchaser Care

When courts analyze this factor, they apply the standard of a typical buyer exercising ordinary caution. If the standard buyer for the products in question is more sophisticated with respect to the purchaser, then a higher standard is proper. If the product is expensive or unusual, then the buyer is seen as exercising greater care in his or her purchase.

7. The Intent of the Defendant in Selecting the Mark

If it is clear that the infringing party chose their mark to intentionally cause confusion, then this may be sufficient to prove the likelihood of confusion.

Purposeful copying shows that the infringer knew that their mark would divert some business away from the senior mark user. 

8. Likelihood of Expansion of the Product Lines

If there is a strong possibility that either business is going to expand to compete with the other, then this shifts the argument in favor of the senior mark. This could include a geographic expansion or an increase in the types of products offered.

The first five factors are used in every trademark infringement case. The last three are added factors that may be considered by a court if the first five still leave open questions.

There is no mechanical test for figuring out the likelihood of confusion. Every case needs to be determined based on the facts presented. Sometimes it is determined that there is no likelihood of confusion, even if the marks are similar and the goods or services that are being sold are in some way related. There are still other factors that can outweigh this.

  • Differences in the trade channels of the goods that are being sold
  • The presence of a large number of similar marks in the marketplace on similar goods or services
  • If a valid consent agreement between the two parties exists or some other fact that gives evidence of the effect of use. 
    • For example, in the case In re Strategic Partners, Inc., the Board reversed a refusal to register the mark ANYWEAR, for the sale of footwear. They said that there was no likelihood of confusion with the other mark in question, ANYWEAR BY JOSIE NATORI, who sells jackets, shirts, and pants. 
    • The Board stated that there was an "unusual situation" that compelled the Board to reverse the refusal. The two marks had already co-existed in the marketplaces for five years and therefore confusion was unlikely. 

The decision in the Strategic Partners case can be applied and weighed against a §2(d) refusal in situations where:

  • The applicant owns a prior registration for the same mark or a mark with no meaningful difference from the mark that iapplied for.
  • The identification of the goods or services in the application and applicant's previous registration are exactly the same.
  • The applicant's previous registration has co-existed for at least five years with the other registration in question.

The Lapp Test

Courts considering the likelihood of confusion between two marks apply a different standard to those are competing directly as opposed to non-competing goods.

When it is obvious that the alleged infringer and the original trademark owner are selling goods or services that are competing, the court rarely looks beyond the marks themselves. If the two marks are similar enough to cause confusion to the consumer, then that is infringement.

The Lapp test is another list of factors, similar to the Dupont Factors, used to determine whether there is a likelihood of confusion.

1. The strength of the original trademark owner's mark

2. The degree of similarity between the two marks in question

3. Proof of real customer confusion

4. What marketing channels are used

5. The type of goods sold by the two companies

6. The amount of care taken by the consumer during the purchasing process

7. The alleged infringer's intent in using their mark

7. Facts that show that the public is likely to think that the trademark owner manufactures or sells a product in the same market as the alleged infringer

Trademark law is fair and places favor on trademarks that registered under the Lanham Act.  In addition to the doctrine of laches, estoppel, and unclean hands, an alleged infringer can use the defenses of fair use and collateral use.  

  • Fair use means that if you can show that you were using the mark for a purpose other than to confuse consumers and divert sales, you may not be infringing.
  • When you use a trademarked item as a piece of a more complex product, collateral use lets you identify that piece of the product by its trademarked name.

Remedies for Trademark Infringement

The most common relief given to a company who successfully argues trademark infringement is an injunction against any further infringement.

If the mark infringed upon is federally registered, the plaintiff would also be able to recover their attorney's fees. Some monetary damages may be available under the Lanham Act, but these are rarely given in trademark lawsuits.

Frequently Asked Questions

  • What is the Lanham Act? 
    The Lanham Trademark Act of 1946, also called the Lanham Act, defines a trademark as, "any word, name, symbol, or device or  any combination thereof" used by any person "to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown."  This act protects trademark holders from infringement by allowing them to claim trademark infringement against any person who uses their mark without the owner's consent.

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