As an owner of a registered trademark or service, you probably wonder when others are responsible for infringing your mark. You should know that the test for trademark infringement is the likelihood of confusion as a result of the similarity of the marks.
What is Likelihood of Confusion for Trademark Infringement?
A person may be liable for infringement of a federally registered mark if his use of a mark in relation to any goods of services is likely to cause confusion, mistake or to deceive. 15 U.S.C.A. § 1114(1). This test to determine whether a registered mark is being infringed is known as the test of likelihood of confusion.
Likelihood of Confusion as to Source, Affiliation, Connection or Sponsorship
The test of likelihood of confusion includes not only the confusion as to source but also as to affiliation, connection or sponsorship. Champions Golf Club v. Champions Golf Club, 78 F.3d 1111, 1121 (6th Cir. 1996) (internal citations omitted). This means that a user of a mark may be liable for trademark infringement if the use creates a likelihood of confusion that the goods are affiliated to, connected with or sponsored by the owner of the registered mark.
Likelihood of Confusion Means Probability of Confusion
In order to show likelihood of confusion, there must be a probability of confusion; mere possibility of confusion is not enough. Nora Beverages, Inc. v. The Perrier Group of America, Inc., 269 F.3d 114, 121 (2d Cir. 2001) (internal citations omitted). It should also be noted that plaintiff does not have to prove actual confusion in order to show that the defendant is liable for trademark infringement. Perfumebay.com Inc. v. eBay, Inc., 506 F.3d 1165, 1176 (9th Cir. 2007) (internal citations omitted). If the plaintiff is able to show likelihood of confusion the defendant will still be liable for trademark infringement even if the plaintiff shows no instances of actual confusion.
There Should Be a Likelihood of Confusion of an Appreciable Number of Reasonably Prudent Consumers
The test for likelihood of confusion is whether a reasonably prudent consumer is likely to be confused as a result of the similarity of the marks. Dreamwerks Production Group, Inc. v. SKG Studio, 142 F.3d 1127, 1129 (9th Cir. 1998) (internal citations omitted). The likelihood of confusion exists when there is a likelihood that an appreciable number of reasonably prudent consumers is likely to be misled or confused because of the similarity of the marks. McGregor-Doniger, Inc. v. Drizzle, Inc., 599 F.2d 1126, 1130 (2d Cir. 1979) (internal citations omitted).
To sum up, there is a likelihood of confusion when there is a probability that an appreciable number of reasonably prudent consumers will be confused as to the source, affiliation, connection or sponsorship of goods or services because of the similarity of the two marks.
What Factors Determine if There is a Likelihood of Confusion?
The Sleekcraft Test for Likelihood of Confusion
Federal courts in different federal circuits have come up with multi-factor tests in order to determine whether there is a likelihood of confusion or not. The test in the 9th Circuit, which includes the State of California, is the eight-factor Sleekcraft test pursuant to which the court shall consider the following factors to determine if there is a likelihood of confusion or not:
- strength of the mark;
- proximity of the goods;
- similarity of the marks;
- evidence of actual confusion;
- marketing channels used;
- type of goods and the degree of care likely to be exercised by the purchaser;
- defendant’s intent in selecting the mark; and
- likelihood of expansion of the product lines.” AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir. 1979) (internal citations omitted).
These factors are not requirements but are helpful guidelines for courts in order to determine whether there is a likelihood of confusion or not. Eclipse Ass’n, Ltd. v. Data General Corp., 894 F.2d 1114, 1118 (9th Cir. 1990). The application of the text shall be flexible, and there is no specific formula setting forth how the factors included in the text shall be considered. Nautilus Group, Inc. v. ICON Health and Fitness, Inc., 372 F.3d 1330, 1346 (Fed. Cir. 2004) (internal citations omitted). The important question is what the analysis as a whole reveals about the issue of likelihood of confusion. Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1141 (9th Cir. 2002). This means that none of the factors is determinative but the analysis as a whole shall answer the question whether there is a likelihood of confusion or not.
The Degree of Similarity of Marks Necessary to Prove Likelihood of Confusion Varies Depending on the Similarity of Goods or Services
It should be noted that the degree of similarity of marks necessary to show likelihood of confusion varies depending on the competitiveness of goods and services. The more similar the goods or services the less similar marks need to be in order to prove likelihood of confusion. Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 877 (internal citations omitted). Conversely, “… the greater the degree of similarity between the marks, the lesser the degree of similarity between the goods is necessary to support a finding of likelihood of confusion.” The Board of Regents, University of Texas System v. Southern Illinois Miners, LLC, 110 U.S.P.Q.2d 1182, 1189 (internal citations omitted). Hence, if the marks are very similar the court may find a likelihood of confusion even if the goods or services at issue are not very similar.
To summarize, your trademark or service mark is being infringed if a use of another mark creates a likelihood of confusion among consumers. If the other mark is very similar to your trademark or service mark you might have a cause of action for trademark infringement even if the goods or services are not very similar.
If you believe someone is infringing on your trademark or have questions regarding trademark registration, copyright, or any other intellectual property related question, we invite you to contact our office and speak to one of our experienced business attorneys at (310) 943-1171.
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