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Likelihood of Confusion
Michael Atkins
Atkins Intellectual Property, PLLCNovember 9, 2012
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Road Map
1. Why likelihood of confusion matters
2. Determining likelihood of confusion
3. Parody
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Importance of Likelihood of Confusion
• Trademark = source identifier
• Trademark owner’s fundamental right: Prevent a likelihood of confusion
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Importance of Likelihood of Confusion
• Basis for refusal of registration−Section 2(d)
−Supports opposition or cancellation proceedings
• Basis for lawsuit −Section 32(1) – Infringement of registered
mark
−Section 43(a) – Infringement of unregistered mark or false designation of origin
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Preventing Likelihood of Confusion
Greyhound logo for bus services
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Preventing Likelihood of Confusion
VANS and VEENS for shoes
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Prima Facie Case
1. Valid trademark rights
2. Priority - First user generally wins
3. Likelihood of confusion
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Likelihood of Confusion Theories
• Concept introduced in Gibson Guitar v. Paul Reed Smith Guitars
• Forward confusion
• Reverse confusion
• Initial interest confusion
• Post-sale confusion
• “Smoky bar” theory of confusion
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Forward Confusion
• Ordinary confusion−Sometimes called “point of sale”
confusion
• Consumer mistakenly associates junior user’s mark with that of the well-known senior trademark −E.g., use of YALE for flashlights and
batteries held to infringe the well-known YALE mark for locks and keys
−What cases reflected this theory?
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Reverse Confusion
• Consumer deals with senior mark owner mistakenly believing it is doing business with the junior one
• Occurs when junior user saturates the market with a similar TM and overwhelms the senior user
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Reverse Confusion
• Junior user does not seek to profit from the goodwill associated with the senior user’s mark−But senior user loses value of TM in
process
−E.g., MIRACLE SUIT for swimwear
• Designed to prevent a larger, more powerful junior user from usurping the business identity of a smaller senior user
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Initial Interest Confusion
• Consumer seeks a particular TM holder’s product and instead is lured to the product of a competitor by the competitor’s use of the same or similar mark
• Even though customer may realize the product is not the one originally sought, she may stay with the competitor−E.g., Sign on highway: “McDonald’s next exit,”
with off ramp leading to Burger King
−Gibson Guitar v. Paul Reed Smith Guitars
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Initial Interest Confusion
• Disfavored
• Common on Internet (e.g., keyword advertising)−Unauthorized use of TM diverts Internet
traffic to defendant’s site, thereby capitalizing on TM owner’s goodwill
• Is temporary advantage enough to create a likelihood of confusion?
• Gibson Guitar’s treatment
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Post-Sale Confusion
• Senior user’s potential purchasers might mistakenly associate the inferior quality work of the junior user with the senior user and, therefore, refuse to deal with the senior user in the future−E.g., Infringer builds kits that make Corvettes
look like far-more expensive Ferraris, making Ferrari cars seem more common and lower quality than they actually are
−Counterfeit good is inferior to authentic good
−Gibson Guitar’s treatment
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“Smoky Bar” Confusion
• Novel theory derided in Gibson Guitar Corp. v. Paul Reed Smith Guitars
• Potential purchaser sees musician playing Paul Reed Smith guitar and thinks it is a Gibson guitar
• Theory rejected, because any alleged confusion benefits Gibson, the party claiming to be injured
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Likelihood of Confusion Factors
1. Similarity of the marks
2. Similarity of the goods
3. Strength of plaintiff’s mark
4. Evidence of actual confusion
5. Marketing channels used
6. Type of goods and degree of care purchaser is likely to exercise
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Likelihood of Confusion Factors
7. Defendant’s intent in selecting the mark
8. Likelihood of expansion of the product lines
• Mixed question of law and fact, but is mostly factual
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1. Similarity of Marks
• Sight, sound, meaning test−Do the marks look alike?
−Do the marks sound alike?
−Do the marks have the same meaning?
• Courts put more weight on similarities than differences
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2. Similarity of Goods
• Whether consumers will assume that junior user’s product is associated with the senior user
• Where goods are related or complementary, the danger of consumer confusion is increased−Do the products compete?−If not, are they close in use or
function?
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3. Strength of Plaintiff’s Mark• Mark’s ability to identify source
Inherently Distinctive NotInherentlyDistinctive
NoDistinctiveness
No Secondary MeaningRequired
SecondaryMeaning Required
NoTrademark
Significance
ArbitraryAnd
Fanciful
Suggestive Descriptive, Geographic,
Personal Name
Generic
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3. Strength of Mark• Technical strength considered
• Practical strength considered
• Greater protection for strong marks; less protection for weaker marks
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4. Evidence of Actual Confusion
• Have any consumers actually been mislead by the similarity of the two marks?
• Evidence of actual confusion is persuasive proof that future confusion is likely−Misdirected mail, complaints
−Surveys
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4. Evidence of Actual Confusion
• Absence of actual confusion need not create inference that no likelihood of confusion exists−However, long coexistence, coupled
with no evidence of actual confusion, can signal confusion is not likely
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5. Marketing Channels Used
• Convergent marketing channels increase the likelihood of confusion−Are goods sold under same roof?
−Do parties use the same distributor?
−Do parties advertise to the same prospective customers?
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6. Type of Goods/Degree of Care
• Usual standard = typical buyer exercising ordinary caution
• Sophisticated buyer makes confusion less likely
• With expensive good, consumer is assumed it will use greater care
− With inexpensive good, consumer relies more on brand name, making confusion more likely
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7. Defendant’s Intent in Selecting Mark
• Is defendant trying to trade on plaintiff’s goodwill?−Defendant’s awareness of plaintiff’s
mark can signal bad faith Particularly for fanciful mark, court will
wonder why defendant selected mark so close to plaintiff’s mark. Only explanation may be defendant’s motivation to trade on plaintiff’s goodwill
−Reliance on advice of counsel can signal defendant’s good faith
−Descriptive mark can signal good faith
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8. Likelihood of Expansion of Product Lines
• A “strong possibility” that either party may expand its business to compete with the other weighs in favor of finding that present use is infringing−e.g., Shoes and socks
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Evaluating the Factors
• Analysis is not a mechanical measurement, where most factors wins
• Courts focus on the ultimate question of whether consumers are likely to be confused
• No one factor is necessarily dispositive, but any one factor may prove to be so
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Tests for Likelihood of Confusion
• Sleekcraft Factors – Ninth Circuit−Gallo v. Gallo Nero
• Polaroid Factors – Second Circuit−CBS v. Liederman
• SquirtCo Factors – Eighth Circuit−Anheuser-Busch v. Balducci Publications
• DuPont Factors – Federal Circuit
• Other circuits have other “multi-factor” tests
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Likelihood of Confusion in Context
• CBS Inc. v. Liederman, 866 F.Supp. 763 (S.D.N.Y 1994)
• How would you analyze the likelihood of confusion?
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Likelihood of Confusion in Context
• Similarity of marks? Similarity of goods?
• Strength of plaintiff’s mark?
• Will CBS “bridge the gap?
• Any actual confusion?
• Liederman’s intent
• Sophistication of consumers
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Likelihood of Confusion in Context
Louis Vuitton and Dooney & Bourke purses
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Introduction to Parody
• Parody must convey two simultaneous and contradictory messages: that it is the original, but also that it is not the original and instead is a parody−Can’t merely use trademark to get
attention See, e.g., Dr. Seuss Enterprises v.
Penguin Books, 109 F.3d 1394 (9th Cir. 1996)
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Introduction to Parody
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Introduction to Parody
• Parody uses at least some of the trademark the parodist criticizes
• Not a defense to trademark infringement−But, a successful parody avoids
likelihood of confusion
−Apply likelihood of confusion factors
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Parody in Context: Anheuser-Busch v. Balducci Publications
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Parody in Context: WAL-OCAUST
