A court will apply the “likelihood of confusion” test in a trademark infringement suit. This is actually an umbrella term for several tests employed by the various federal circuits. However, most courts use a group of similar factors to assess confusion. The court will analyze and weigh each factor to determine if a consumer, in the marketplace context, is likely to be confused by the two marks. For this reason, the test is highly fact-intensive and each factor may be accorded different treatment depending on the case. Here is a look into the eight-factor test applied by the 6th Circuit.
THE 8-FACTOR TRADEMARK INFRINGEMENT TEST
1. STRENGTH OF THE SENIOR MARK
The senior trademark is the one that was registered first or used first. The more distinctive is the senior mark, the more protected it is. A court will measure distinctiveness along the following spectrum:
- Definition: Words or symbols that describe the product itself, rather than distinguish between competing versions of the product. A trademark can be rendered generic if consumers begin to use the mark as the generic name of the entire product group (like “aspirin”)
- Strength: Never distinctive
- Example: E-mail (no trademark)
- Definition: Words or symbols that merely describe the ingredients, qualities, features, purpose or characteristics of a product.
- Strength: Distinctive only if the mark has acquired secondary meaning. Secondary meaning indicates that although the mark is on its face descriptive of the product, consumers recognize the mark as having a unique source. Registered marks with incontestable status will be presumed to be at least descriptive with secondary meaning.
- Example: Windows (trademarked because it has a secondary meaning)
- Definition: Suggestive trademarks suggest qualities of the underlying product, such that it requires imagination, thought, and perception to determine the nature of the product in question.
- Strength: Inherently distinctive
- Example: Playstation (trademarked because it suggests that it is a videogame device)
- Definition: Arbitrary terms are names that exist in popular vocabulary, but have no logical relationship to the products for which they are used. Whether a word is arbitrary or not has everything to do with the context in which it is used. The pairing of the mark with the particular category of product should appear to be random.
- Strength: Inherently distinctive
- Example: Apple (trademarked because computers bear no relation to the actual fruit)
- Definition: Terms that are invented for the sole purpose of serving as trademark and have no possible association with the product for which it is used.
- Strength: Inherently distinctive. Infringers of these marks are hard pressed to provide any explanation for their use the mark, leaving the impression that the real reason was a blatant attempt to trade off the goodwill generated by the owner of the trademark.
- Example: Xerox (trademarked because the word has no meaning outside of this context)
2. RELATEDNESS OF THE PRODUCTS
Relatedness does not mean that the products are in the same broad industry. Rather, it means that the two products have the potential to be connected in the mind of the consumer. Each case typically fits into one of the following three categories (and the weight given to the factor will change accordingly):
- If the products compete directly then confusion is likely if the marks are sufficiently similar.
- If the products are somewhat related but not competitive, then confusion will turn on other factors.
- If the products are totally unrelated then confusion is unlikely.
3. SIMILARITY OF THE MARKS
This is a factor that the courts usually accord greater weight. The court will look at the pronunciation, appearance, and verbal translation of conflicting marks. It will look to see if the given mark would confuse the public when viewed in isolation. Also, the mark will be viewed in its entirety, not by its individual features.
4. EVIDENCE OF ACTUAL CONFUSION
The existence of actual confusion is direct evidence that the products in their actual market context have similarities sufficient to create confusion. This factor will only be weighted heavily when there is evidence of past confusion or when the particular circumstances indicate such evidence should have been available. Nevertheless, isolated instances of actual confusion after a significant period of time of concurrent sales or extensive advertising do not always indicate an increased likelihood of confusion and may even suggest the opposite.
5. MARKETING CHANNELS USED
A court will assess the similarity of the marks in light of the way they are encountered in the marketplace and the circumstances surrounding their purchase. Evidence may include the relevant market the two products are sold in, the type of business the marks are used for, the methods of advertisement employed by the two parties, and the location that the respective products can be found at stores.
6. LIKELY DEGREE OF PURCHASER CARE
Generally, when analyzing this factor in a trademark infringement test, a court will apply the standard of the typical buyer exercising ordinary caution. However, if a buyer has expertise or is otherwise more sophisticated with respect to the purchase of the product at issue, a higher standard is proper. Similarly, when products are expensive or unusual, the buyer can be expected to exercise greater care in her purchases. The ultimate significance of a given degree of care, however, often will depend upon its relationship with the other seven factors.
7. THE INTENT OF DEFENDANT IN SELECTING THE MARK
If a party chooses a mark with the intent of causing confusion, that fact alone may be sufficient to justify an inference of confusing similarity. Intent is relevant because purposeful copying indicates that the alleged infringer believes that his copying may divert some business from the senior user. Direct evidence of intentional copying is not necessary to prove intent. Rather, the use of a contested mark with knowledge of the protected mark at issue can support a finding of intentional copying.
8. LIKELIHOOD OF EXPANSION OF THE PRODUCT LINES
A strong possibility that either party will expand his business to compete with the other or be marketed to the same consumers will weigh in favor of finding that the present use is infringing. A geographic expansion or an increase in the types of products offered can be relevant. A finding that the parties will not expand their markets significantly, however, does not address the ultimate issue of likelihood of confusion. Thus, an affirmative finding will provide a strong indication that the parties’ simultaneous use of the marks is likely to lead to confusion, while a negative finding is not a strong indication to the contrary.