What is all this “Likelihood of Confusion” Talk Really About Anyway?

 

Suppose a lady walks into a bar and orders a PEPSI tequila thinking it was made by the company who created her favorite soft drink, PEPSI cola. While at the bar, she spills the drink on her all white dress, so the next day she goes to ATL’s FINEST, a dry cleaner’s, because one of her girlfriend’s is always raving about the dry cleaner’s she frequents, ATLANTA’s FINEST CLEANER’s. On her way back from the cleaner’s, she signs up for a 3-year membership to the local EXHALE BODY & FITNESS believing it to be a franchise of EXHALE, her favorite spa and fitness center she used to go to when she lived in Boston.

 

This is exactly what trademark law aims to protect – customer confusion as it relates to the source of goods and services. In the above examples, all of the brands that she intended to frequent could possibly lose control of the reputation of their brands if she receives subpar experiences with them because of her mistaken belief that the junior brands were actually the intended brands. In addition, the junior brands are winning based off the good will of the intended brands because the only reason she was interested in trying the goods or services was because of her mistaken belief.

 

The benchmark of trademark infringement and registration is whether or not a mark is likely to be confused with a pre-existing mark. It “is designed to promote informational integrity in the marketplace”. When customers are not confused about what it is they are buying and whom they are buying it from, it allows them to make informed decisions and to make well intended purchases. The result is that manufacturers of goods and service providers are incentivized to create brand recognition while also creating goods and providing services that result in consumer satisfaction; all of which would be broken, if other businesses and brands were able to simply capitalize off that brand recognition by creating a similar brand.

 

Likelihood of confusion is the central issue in all trademark disputes and the states and federal courts differ as to whether or not confusion is likely. The central issue is whether or not the use of the same or similar trademark is likely to cause confusion amongst the buying public. Likelihood – meaning not actually. And one random act of confusion won’t do. It must be an appreciable amount to be considered a likelihood. 

 

Confusion may be found as to source – meaning a consumer believes the same entity is responsible for the goods or services or confusion may exist as to affiliation or sponsorship – meaning consumers are led to believe that the brand owner approves of the conflicting product or services. 

 

The United States Patent and Trademark Office (USPTO) and the federal courts use the DuPont factors, while the individual circuit courts have come up with their own variation of them for determining whether or not a likelihood of confusion has occurred. The DuPont factors are: 

  • the similarity or dissimilarity of the marks 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 application or registration or in connection with which a prior mark is in use
  • the similarity or dissimilarity of established, likely-to-continue trade channels
  • 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
  • the extent to which 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
  • any other established fact probative of the effect of use

 

The courts need not consider each factor in determining whether or not a likelihood of confusion occurs, and oftentimes only looks to the similarity of the mark and the similarities of the goods/services, or whichever factors they deem to be “relevant”. The factors are not given the same weight and it is possible for one factor to be controlling where the circumstances show an extreme likelihood of confusion based on that one factor alone.

 

In sum, when coming up with a mark, you may want to weight it against how likely it is to be confused with a well-known mark prior to going through the application process. The application of trademark law is very fact specific, so it’s difficult to ascertain how the USPTO or a court would decide in any case, but at least now you know what you could be up against.