Likelihood of Confusion
Once it appears that a proposed mark has sufficient distinctiveness and is subject to registration, a search must be conducted for other uses of the proposed mark in the marketplace to ensure there is no likelihood of confusion with an existing mark or use of the mark. Failure to conduct an adequate search and analysis of other potentially confusing similar marks can cause problems for the applicant including:
- the mark to be refused registration by the Patent and Trademark Office;
- an opposition action to be filed before the Trademark Trial and Appeal Board by the owner of a mark believed to be confusingly similar; or
- an action for trademark infringement against the applicant filed in state or federal court, depending on whether or not the applicant has used the mark in the marketplace.
Documentation of the search conducted for confusingly similar marks is essential to help demonstrate proper due diligence in selection of a mark in the event an infringement action is filed at a later date. Demonstration of proper due diligence would likely prevent a later finding that the applicant willfully infringed a third party’s trademark.
The issue is not whether the respective marks themselves, or the goods or services offered under the mark are likely to be confused, but rather, whether there is a likelihood of confusion as to the source of sponsorship of the goods or services because of the marks used thereon.[1]See TMEP §1207.01 The ultimate question of the likelihood of consumer confusion has been termed a question of fact. If labeled a mixed question or one of law, it is necessarily drawn from the probative facts in evidence and as so often said, each case must be decided on its own facts. There is no litmus test which can provide a ready guide to all cases.
In testing for likelihood of confusion under 15 U.S.C.S. 1052(d), therefore, the following factors, when of record, must be considered:
(1) The similarity or dissimilarity of the marks in their entirety as to appearance, sound, connotation and commercial impression.
(2) The similarity or dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use.
(3) The similarity or dissimilarity of established, likely-to-continue trade channels.[2]See TMEP §1207.01(d) (vii)
(4) The conditions under which and buyers to whom sales are made, i.e. “impulse” vs. careful, sophisticated purchasing.[3]See id.
(5) The fame of the prior mark (sales, advertising, length of use).
(6) The number and nature of similar marks in use on similar goods.[4]See TMEP §1207.01(d)(iii)
(7) The nature and extent of any actual confusion.
(8) The length of time during and conditions under which there has been concurrent use without evidence of actual confusion.
(9) The variety of goods on which a mark is or is not used (house mark, “family” mark, product mark).
(10) The market interface between applicant and the owner of a prior mark:
(a) a mere “consent” to register or use.
(b) agreement provisions designed to preclude confusion, i.e. limitations on continued use of the marks by each party.
(c) assignment of mark, application, registration and good will of the related business.
(d) laches and estoppel attributable to the owner of prior mark and indicative of lack of confusion.[5]See also TMEP §1207.01(d)(viii)
(11) The extent to which applicant has a right to exclude others from use of its mark on its goods.
(12) The extent of potential confusion, i.e., whether de minimis or substantial.
(13) Any other established fact probative of the effect of use.[6]In re E. I. Du Pont de Nemours & Co. (1973) 476 F.2d 1357, 1361 Fundamentally, there is no mechanical test for determining a likelihood of confusion, and each case must be decided on its own facts.