Leadership Lab: Intellectual Property Series
This series of essays can help the IT manager learn how to identify and protect intellectual property and intangible assets.
Other Related Articles in Leadership Lab: Intellectual Property Series
Trademark Infringement - The Likelihood of Confusion
Eugene R. Quinn, Jr.
A SANS Leadership Lab reader, Christina Taylor, recommended a website, SecureYourTrademark, that provides information and services for trademark issues.
Perhaps the most common trademark infringement theory is the likelihood of confusion. In fact, you do not even need to have a federally registered trademark in order to charge that someone else is causing a likelihood of confusion, although having a registered trademark does make the case much stronger. The reason that this theory is so common place is because most times individuals and businesses do not want to use the exact same trademark or name as another, but may want to use a trademark or name that is quite close. The question then becomes whether the chosen trademark, name, slogan or logo is too close to one that is already existing. Too close is determined by whether the relevant consuming public would likely be confused by the second mark.
When the goods produced or services offered by the alleged infringer compete for sales with those of the trademark owner, infringement usually will be found if the marks are sufficiently similar that confusion can be expected. When the goods are related, but not competitive, several other factors are added to the calculus. If the goods are totally unrelated, there can be no infringement because confusion is unlikely.
Although trademark law is federal, there are slightly different approaches used by the various federal courts to determining whether there is a likelihood of confusion. These formulations tend to be a matter of degree, and most if not all cases would result the same regardless of the particular formulation of the likelihood of confusion test employed. One of the more popular tests comes from AMF, Inv. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir., 1979). The eight factors considered in this case were:
1. Strength of the Mark
This factor considers whether there is a federally registered trademark and how distinctive the trademark is. Not all trademarks are created equally. The strongest trademarks are those that are considered arbitrary or fanciful, which describe trademarks that have nothing to do with the good or service being marketed using the mark. A less strong mark would be one that is suggestive, which is one that subtly connotes something about the product or service. The least strong of all trademarks is one that is descriptive. In fact, you cannot even obtain a federal trademark on a mark that is descriptive of the goods or services unless the mark has acquired secondary meaning, which means that it is readily and easily understood by the consuming public to be associated with one and only one supplier. For this reason, whenever you are trying to select a trademark you are best served by picking one that is arbitrary, fanciful or suggestive.
2. Proximity of the Goods
For related goods, the danger is that the public will mistakenly assume there is an association between the producers of the related goods even though no such association exists. The more likely the public is to make such an association, the less similarity required to a finding of likelihood of confusion.
3. Similarity of the Marks
Similarity of the marks is tested on three levels: sight, sound, and meaning. Each must be considered as they are encountered in the marketplace. Similarities weigh more heavily than differences.
4. Evidence of Actual Confusion
It may come as a surprise to many, but there does not need to be evidence of actual confusion in order to find a likelihood of confusion. Nevertheless, evidence that use of the two marks in question has already led to confusion is persuasive proof that future confusion is likely, provided of course that the evidence is trustworthy.
Another important thing to remember is that the law is not concerned with the public at large, but rather the relevant consuming public.Years ago the company that makes Sam Adams beer, the Boston Beer Company, wanted to prevent a Boston bar, the Bost Beer Works, from using what they perceived to be a similar name. The trouble was that the relevant consumers, those who drink beer in Boston, knew that there was no affiliation between the two companies. Therefore, even though the names were quite similar there was no likelihood of confusion.
5. Marketing Channels Used
If the products or services in question are marketed through the same means, perhaps being distributed by the same parties, then this would favor a finding of likelihood of confusion. Thus, it is said that convergent marketing channels increase the likelihood of confusion.
6. Types of Goods and Purchaser Care
In assessing the likelihood of confusion to the public, the standard used by the courts is the typical buyer exercising ordinary caution. The courts, however, typically realize that the elimination of confusion is something that is impossible. Therefore, we do not ask whether the most ignorant member of society would be confused, but rather whether a typical buyer would be confused. The law also recognizes that the attention given by purchasers raises with the cost of an item, so less care is given to lower priced items, which could lead to a greater likelihood of confusion. Nevertheless, the law also recognizes that if the allegedly infringing product sells for substantially less than the trademarked product a typical consumer would be suspicious and make further inquiry. For this reason it is not atypical to see generics packaged similarly with brand names. The price difference will work to eliminate any confusion as to what is being purchased.
When the alleged infringer knowingly adopts a mark similar to another's, most courts would presume that the defendant will accomplish his/her purpose: that is, that the public will be deceived.
8. Likelihood of Expansion
Inasmuch as a trademark owner is afforded greater protection against competing goods, a "strong possibility" that either party may expand his business to compete with the other will weigh in favor of finding that the present use is infringing.
As you can see, the focus of the inquiry is whether consumers will likely be confused. The goal is to protect consumers, not to protect trademarks. Therefore, even if the marks in question are quite similar but there is no real likelihood that consumers will be confused then there would be no harm.===
Eugene R. Quinn, Jr. is a Patent Attorney & founder of IPW Watchdog.com. He also teaches at Concord Law School and teaches a patent bar review course for the Practicing Law Institute. He has taught a variety of intellectual property courses at Syracuse University, Temple University, The University of Toledo, Franklin Pierce, and Whittier Law Schools.
This article is reprinted with the author's permission. August 22, 2007, original at the author's web site, focusing on intellectual property law.