“Likelihood of confusion” is the touchstone of trademark infringement. There are specific questions a court will ask in determining the likelihood of confusion:
- the similarity of the trademarks with respect to appearance, sound, connotation, and impression
- similarity of the goods or services
- similarity of “trade channels”
- conditions of sale, that is “impulse” v. considered purchases
- strength of the competing trademarks
- actual confusion
- number and nature of similar marks on similar goods
- length of time of concurrent use without actual confusion
- variety of goods with which each of the marks is used
Basically, if a confusingly similar mark is likely to deceive or confuse any significant number of persons, infringement exists. Questions may very by state.
Similarity of Trademarks
Marks may be confusingly similar based on physical design, sounds, psychological, commercial, or social connotations and significance, color scheme, or linguistic characteristics. (e.g. registration has been refused on “styleomatic” when the owner of “dialomatic” opposed it in reference to sewing machines.)
Similarity of Goods or Services
To the extent that the trademarks may not be very similar, this factor may be so great as to tip the balance. On the other hand, nearly identical trademarks may be found non-infringing if the goods or services are entirely unrelated. (e.g. “Dramamine” and “Bonamine” for motion sickness medicines were infringing, but if one were used on a completely dissimilar and non-related product, infringement would not result.)
Similarity of “Trade Channels”
Whether the average consumer is likely to be confused by similar marks applied to similar products or services depends upon the consumer and her environment. One product may be sold in retail while the other product is sold wholesale.
Conditions of Sale
When dealing with “impulse” shopping, where goods are stocked closely together, and in which the consumer may be relatively inattentive, confusion is likely. When considering purchases of expensive automobiles or highly technical equipment in which consumers are likely to exercise sophisticated judgments, confusion is much less likely.
Strength of the Competing Trademarks
The amount of fame the competing trademarks have achieved is also considered.
There can be little better evidence than evidence of actual confusion. Proof of this disposes of the central issue of confusion. (e.g. actual witness testimony.)
Nature of the Mark
For instance, a fanciful mark is likely to receive more protection than a common phrase, partly because there is less of a public interest in preserving public rights in a fanciful mark than there is in a word or phrase that use part of our language.
Length of Time of Concurrent Use
The longer the use, the less likely confusion will be found.
Variety of Goods
The broader the market and product definition are, the more likely it is that goods will be found similar.
Should I Consult a Lawyer about my Trademark Issue?
If you have an issue of the possibility of trademark confusion, a trademark lawyer can help guide you through the difficult task of determining whether your trademark or another’s trademark make be confusingly similar to one another.