General Practice, Solo & Small Firm DivisionMagazine
Volume 17, Number 3
- The Strength of the Plaintiff's Mark. The "strength" of a mark refers to its ability to identify the source of goods or services in the relevant segment of the marketplace. This is one of the most important factors in assessing likelihood of confusion. The "stronger" the mark, the more likely consumers will be confused if that mark is applied to competing goods, and even to goods that are not closely related to the goods on which the mark is used.
- The Degree of Similarity Between the Two Marks. Similarity of the marks lies at the core of the likelihood of confusion analysis. The standard analysis compares the marks in sound, meaning, and appearance. Generally, one should consider a trademark in its entirety, rather than examine its constituent components.
- The Proximity of Goods or Services of the Parties in the Marketplace. This factor examines whether the goods at issue are related in some manner that is likely to lead the public to believe mistakenly that a trademark owner's goods emanate from or are sponsored by another. The goods do not have to be the same; confusion can arise between dissimilar goods. That being said, however, it is generally easier to prove likelihood of confusion between competitive or closely related goods than noncompetitive goods.
- The Likelihood That the Plaintiff Will Bridge the Gap Between the Products. Even if the goods at issue are dissimilar, a plaintiff may be able to show that consumer confusion is likely by showing that either the senior or junior user of the mark will expand its business to compete with the other.
- Evidence of Actual Confusion. Although proof of actual confusion is not necessary to establish likelihood of confusion, evidence of actual confusion is strong, and perhaps even the best, evidence of the likelihood of confusion. Evidence of actual confusion frequently consists of misdirected phone calls and mail.
- Defendant's Intent in Adopting Its Mark. Like evidence of actual confusion, evidence of the junior user's intent to confuse in adopting the mark is not necessary to prove likelihood of confusion. Where it is shown, however, it is powerful evidence. The rationale underlying the intent factor is that a court may properly presume that a defendant who intended to confuse consumers accomplished its purpose.
- The Quality of the Defendant's Products. The focus of this inquiry is not the inherent quality of the goods, but rather their comparative quality. There are two slightly different approaches to this analysis: (1) an inferior quality product injures the senior user's reputation because people may believe the goods come from the same source or (2) a product of equal quality promotes confusion that the goods come from the same source.
- The Sophistication of the Relevant Consumers. The "reasonably prudent purchaser" who is likely to encounter the mark will differ from case to case, depending on the nature of the goods at issue. Generally, the lower degree of care likely to be exercised by a consumer, the greater the likelihood of confusion, and vice versa. It is presumed that consumers making high-cost purchases generally will exercise greater care than consumers making low-cost purchases.