7 Factors For Identifying Trademark Likelihood of Confusion

Trademarks are protected by law in order to facilitate effective commerce.  Essentially, a trade mark enables a consumer to know the source of goods or services by the trademark.  If consumers have come to expect a certain level of quality from a certain supplier, it would not be economically efficient for society for new entrants to steal business from that supplier merely by using a confusingly similar name.  If allowed, consumers would buy products with different qualities than expected and the trademark holder would not be benefitting from the brand reputation they spent their resources to build.

But what if someone doesn’t copy the name exactly, but rather make a confusingly close mark, whether intentionally nor not?  James Hurts opens an Uber-type business named Hurts Rental Car.  Is that confusingly similar to Hertz Rent-a-Car?  To one person, that might be obvious infringement, but to Mr. Hurts, he might see his last name as being clearly different from a different spelling and a taxi-type service being different than actually renting a car.  If Hertz sues Hurts for trademark infringement, the courts will look to statutory law and past court decisions to decide who wins.

The Lanham (Trademark) Act, 15 U.S.C. §1052(d) states:

No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it . . . (d) Consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive…

In order to prove trademark infringement, the trademark owner will need to show a “likelihood of confusion” between their trademark and the allegedly infringing mark.  This analysis has been established by the case law created by judges deciding other cases and informs the criteria for deciding this issue.

Here are seven of the most established criteria the court will use to decide whether the allegedly infringing mark is confusingly similar to the incumbent trademark.  It’s important to remember that all of the factors on our list are evaluated together.

  1. Relatedness of Goods or Services

Would an ordinary, sensible purchaser be likely to purchase a good under Trademark A, believing it to be from Trademark B?  Such is the basic standard when evaluating the likelihood of confusion.

The more similar the marks at hand, the less similar the goods or services need to be to support a finding of likelihood of confusion.  For our example, Hurts has a better chance of succeeding if he has a completely different look and feel (different colors, fonts, etc.) for his mark than if he uses the same Hertz color and font.

The more dissimilar the goods or services, the less likely the court is to find confusion.  For our example, if Hurts were instead selling T-shirts in Boston (as a tongue-in-cheek joke for his restaurant “Hoits Rentakah”) and he clearly described the location as a restaurant, the court would likely be more lenient to Mr. Hurts because there is less likelihood of confusion that the restaurant is run by Hertz Rent-a-Car, despite a similar sounding name locally.

  1. Similarity of Marks

The court will also evaluate the overall similarity of the marks: Appearance, sound, connotation and commercial impression are all evaluated.  This test provides the court to inject common sense (and subjectivity) into the decision.  Generally, we all have a sense of what is confusingly similar, this is the element where that basic instinct plays in.  Is STARBUCKS in green letters to indicate a coffee shop confusingly similar to STARBACHS in green letters to indicate a bookstore also selling coffee?  Would it be confusing to someone driving down the road with only a second to glance at the sign before turning in to buy a cup of joe?

  1. Similarity in Appearance

The above example also demonstrates how marks may be confusingly similar in appearance despite the addition, deletion, or substitution of letters or words. Two letters were changed between STARBUCKS and STARBACHS, but the driver on the road making the turn likely didn’t notice.  Consider Walmart and Walnnart.  Does the double “n” make a new mark or is it similar enough to the mark holder that it is similar in appearance in the same font?

  1. Similarity in Sound

The similarity of sound, or phonetic equivalence, is another factor in determining the likelihood of confusion. Back to an earlier example, what is “Hoits Rentakah” is a Boston Car Rental Company?  Is it similar to Hertz Rent-a-Car?  Does it matter if it is in Boston or California?  Likely the court will assume that, regardless of where Hoits is located, Hoits sounds confusingly similar to Hertz in cars, but probably not in restaurants.

  1. Similarity in Meaning

Another important factor is the similarity in meaning that the trademark and the allegedly infringing mark each convey.  Even if the two trademarks are identical in sound and appearance, they may create significantly different commercial impressions, thereby not creating a likelihood of confusion.  On the other hand, even if the names are completely different, they may still create a likelihood of confusion.  For example, in a famous case, PROMISE brand cleaner was found to be confusingly similar to the trademark PLEDGE, because a PLEDGE is a PROMISE.

  1. Similarity in Design

A trademark is a vessel of understanding of a source of goods or services.  That vessel can be a word, a color, a sound (think Law and Order TV show), or a symbol (Apple logo).  Would you be confused if a computer had an outline of an apple that didn’t have a bite taken out whether that product was from Apple?  The court would likely believe the two are confusingly similar on computers, but not if the un-eaten apple logo was on vegan dog food.

  1. Likely to Deceive

The defending, allegedly confusing mark, is likely never going to admit they filed the mark just to steal business from the established brand.  So while many confusingly similar marks are intended to deceive, this is rarely used by the patent office in deciding the eligibility of a mark and is very difficult to prove in a court case without a smoking gun (like an email from Mr. Hurts expressing his intent to steal business from Hertz leveraging his common name).

           Closing Note:

Since each of these tests is subjective to a certain degree, the same outcome which seems just to one person will appear egregious to another.  For this reason, if developing a new mark, you should work with your attorney to develop a mark that is inherently distinctive (for instance a completely arbitrary mark) to avoid the pitfalls of confusion and to make your job easier protecting your mark in the future from confusingly similar competitors.

Robert P. Mino, PA, is available to support your trademark needs.  From searching and filing, to answering the trademark office or other mark holders, we are happy to help.