The touchstone of any trademark infringement case is the likelihood of confusion. The Trademark Act provides that:
Thus, in order for a trademark owner to prove trademark infringement, the owner must show a “likelihood of confusion” between their trademark and the allegedly infringing mark. The United States Patent and Trademark Office (“USPTO”) and federal courts have enumerated a number of factors to determine whether any likelihood of confusions exists between competing marks. The factors vary slightly based upon the deciding court. This particular post focuses on the factors used by the USPTO during the trademark application examining process.
The USPTO determines that a likelihood of confusion exists when both: (1) the marks are similar, and (2) the goods and/or services of the parties are related such that consumers would mistakenly believe that the goods and/or services originate from the same source. The factors used to determine those similarities are outlined below.
SIMILARITY OF MARKS
RELATEDNESS OF GOODS AND/OR SERVICES
In assessing the relatedness of the goods and/or services, it is important to understand that the goods and/or services do not have to be identical or even competitive to find that a likelihood of confusion exists. The relatedness of the goods and/or services is determined by considering the commercial relationship between the goods and/or services identified in the application against those identified by the earlier trademark owner. It is sufficient that they are related or marketed in such a manner that consumers are likely to assume that they come from a common source. To be clear, the issue is not whether the actual goods and/or services are likely to be confused but, rather, whether a likelihood of confusion would exist as to the source (or provider) of those goods and/or services.
As you can see likelihood of confusion is not always black and white. If you are trying to ascertain whether your mark is likely to cause confusion with an existing mark, it is best to retain trademark counsel to assist in the analysis. Failure to consult trademark counsel can result in cease and desist demands, trademark litigation, or considerable expenses in rebranding and marketing efforts.
This blawg is provided by the firm for informational purposes only and may not be relied on as legal advice. If you have any questions related to your specific business needs, schedule your legal consultation today.