Likelihood of Confusion: How Do You Determine If a Trademark is Infringing?

Are you concerned that a competitor is unfairly using the same or a similar trademark as your business? In order to stop trademark infringement, the senior user—the first business to adopt and use a particular mark in connection with its goods or services—must prove likelihood of confusion. Issues of likelihood of confusion arise in three ways: registration; inter partes proceedings; and infringement litigation. In each case, the standard is the same -- is it probable, under all of the circumstances, that consumers of the relevant goods will be confused.

The Polaroid Factors

When determining likelihood of confusion, courts use several factors derived from a 1961 case. (Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir. 1961).) These factors, sometimes known as the “Polaroid factors,” may vary slightly as federal courts apply them throughout the country. The factors are intended as a guide, and not all factors may be particularly helpful in any given case.

• Strength of the senior user’s mark. The stronger or more distinctive the senior user’s mark, the more likely the confusion.
• Similarity of the marks. The more similarity between the two marks, the more likely the confusion.
• Similarity of the products or services. The more that the senior and junior user’s goods or services are related, the more likely the confusion.
• Likelihood that the senior user will bridge the gap. If it is probable that the senior user will expand into the junior user’s product area, the more likely there will be confusion.
• The junior user’s intent in adopting the mark. If the junior user adopted the mark in bad faith, confusion is more likely.
• Evidence of actual confusion. Proof of consumer confusion is not required, but when the trademark owner can show that the average reasonably prudent consumer is confused, it is powerful evidence of infringement.
• Sophistication of the buyers. The less sophisticated the purchaser, the more likely the confusion.
• Quality of the junior user’s products or services. In some cases, the lesser the quality of the junior user’s goods, the more harm is likely from consumer confusion.
• related products and services.

Breaking Down the Factors

Every federal circuit in the United States uses a multi factor analysis in determining if there is a likelihood of confusion. Although the number of factors may vary from each federal circuit, the principles are similar and all relate in some way to consumer perception.

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Strength of the Mark

A mark is "weak" if it is descriptive and has not acquired sufficient secondary meaning. A mark is "strong" when it has acquired secondary meaning, or if it is arbitrary, fanciful or suggestive. The owner of a weak mark will have difficulty proving likelihood of confusion. For example, the mark, Maid in America for cleaning services was determined to be descriptive. The owner was unable to demonstrate a sufficient showing of advertising or sales to prove secondary meaning. Therefore, the trademark owner did not prevail in a claim of infringement against a similar mark. If descriptiveness is an issue in an infringement action, a survey may be conducted to prove secondary meaning. 

Similarity of the Marks

As a general rule, marks must be compared in their entirety, including appearance, sound, connotation and commercial impression. However, whether two marks are similar may require dissecting and comparing the elements of each mark.

In one case, the owner of the mark OAG Travel Planner sued the owner of the mark The Travel Planner. The court determined that the mark Travel Planner was descriptive and weak, but that the use of OAG in conjunction with "Travel Planner" created an arbitrary mark. Since there were similarities in sight and sound, the court determined that the marks were likely to confuse customers.  Similarly, a court found similarity between Dutch Masters and Little Dutchman for cigars because of the common use of the dominant term "Dutch."

However, adding a prefix or suffix, changing letters or adding clarifying information may not avoid a claim of similarity of marks. For example, the following marks were found to be similar: Magnavox and Multivox; Simoniz and Permanize; Platinum Puff and Platinum Plus; Zirco and Cozirc; and Maternally Yours and Your Maternity Shop.

In addition, the similarity of the meaning of the marks may also be taken into consideration. For example, the following marks were held to be similar: Mr. Clean and Mr. Rust and Mr. Stain; Thirty Forty Fifty and 60 40 20; and Pledge and Promise.

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Similarity of the Goods

The standard of infringement is whether an ordinary prudent purchaser would be likely to purchase one item, believing he was purchasing the other. For example, Chlorit when used on bleach is likely to be confused with Chlorox. As a general rule, a trademark owner is permitted to use a similar mark as long it is on completely dissimilar goods. For example, the use of the mark Lexus on automobiles was determined not to confuse consumers of the Lexis database services.

The protection afforded to a trademark owner may extend to related goods. For example, a trademark for canned salmon may also extend to other canned fish. Use of a mark on kerosene lamps may extend to electric lamps. In such cases, the courts consider whether the buying public would reasonably expect that the goods came from the same source. The more extensively used and the more popular the mark, the more likely it is that consumers will expect an expansion of the product base.  For example, would consumers confuse the McDonald's trademark for food establishments with Quality Inn's McSleep for motel services? Yes, according to a federal court. The reason is because the "Mc" prefix has been used so extensively by the McDonald's Corporation that its expansion into non-food categories is expected. In fact, the company already has expanded into children's clothing with its McKids clothing line. The same is true for the Coca Cola mark which has been licensed for clothing, glassware, puzzles, watches, bags and other non food items. The Coca-Cola mark has also been infringed on unlikely goods. (For example, the trademark has been used on "can wraps" which are labels intended to be wrapped around an alcoholic beverage to disguise its contents.)

The courts also consider the similarity of the advertising and distribution channels. Many courts weigh this evidence separately to determine if consumers or distributors may be exposed to potential confusion. For example, if the plaintiff sells salami directly to consumers but the defendant only sells salami in bulk to delicatessens, that may be an important factor in avoiding a claim of infringement.

Degree of Care Exercised By the Consumer

The degree of care exercised by the consumer varies according to the purchase. Generally, a buyer making a very expensive purchase is more likely to be discriminating and is less likely to be easily confused as to similar marks. The reason for this higher degree of care is because the consumer buys expensive items less frequently. Therefore the courts assume that such purchasers are likely to be more discriminating and source-conscious when purchasing real estate services, insurance or other "high ticket" items. Under these circumstances, the courts require a more substantial showing of similarity to justify a claim of likelihood of confusion. The same is true for items that are purchased by "professional buyers." A professional buyer is a person who arrives at the purchasing point already knowledgeable about the goods (e.g., a pharmacist, physician, architects, builders, etc.) A professional buyer is less likely to be confused because of their superior knowledge as to purchasing decisions.

An ordinary purchaser, particularly one that buys inexpensive items on impulse is the most likely to be confused by similar marks. This consumer, for example, may quickly scan the aisle of a supermarket and impulsively purchase a box of garbage bags without realizing that she has been confused as to the choice of brands. In this instance, a lesser degree of care has been exercised. Therefore, less similarity may be necessary to prove likelihood of confusion.

Defendant's Intent

Although the intent of the defendant is not essential in proving infringement, it is a relevant factor. According to the Restatement of Trademarks, it is appropriate to consider the defendant's intent because a party intending to cause confusion will generally be successful in doing so. Direct evidence of the defendant's intention to deceive is usually unavailable and the plaintiff must depend on circumstantial evidence such as how the defendant's mark was chosen or whether the defendant continued use of the mark after plaintiff's warning.

Actual Confusion

Proof of actual confusion is not essential in determining trademark infringement. However, such evidence may be compelling in an infringement case. Sometimes companies conduct surveys to determine actual confusion. These surveys are expensive and if improperly performed, they may subvert the plaintiff's case.

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