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The terms, "confusingly similar" or "likelihood of
confusion" both refer to the legal criteria required to prove infringement
of a trademark. Specifically, if consumers are likely be confused
or mistaken about the source of a product or service, then a likelihood of
confusion exists, and the trademark has been infringed.
It is worth noting here that even if there
is no likelihood of confusion, i.e. no trademark infringement, you may still be
liable for using another company's trademark if you are blurring or tarnishing
their mark under the state and/or federal dilution
laws. Fortunately, dilution law only applies to "famous" or "well
known" trademarks. Unfortunately, knowing whether a trademark is
famous is next to impossible to determine, you would probably have to know the
sales and advertising scope of a company to make that determination. Of
course, some trademarks are obviously famous and should be avoided, such as
Nike, Xerox, Kodak, Chevrolet, etc.
Kinds of confusion:
Trademark law seeks to proactively prevent consumer confusion, and thus
it does not require proof of actual consumer confusion in order for infringement
of another company's trademark to occur. All that is necessary is for the
trademark owner to be able to prove that a hypothetical, "reasonably
prudent" consumer would likely be confused by the use of the same or a
similar trademark on potentially competing products. What's more, the
hypothetical purchaser is not expected to make detailed, side-by-side
comparisons, or to have perfect recall. Infringement is not
limited to confusion of consumers as to source, but includes confusion of any
kind with respect to consumers or potential consumers. Courts have even
found a likelihood of confusion to exist where the public at large could be
confused, even though the actual purchasers themselves are not confused (e.g.
the outer packaging that gets thrown away contains a large disclaimer, but the
product inside is still confusing).
In determining likelihood of
confusion, courts evaluate several factors. No one factor is determinative in
and of itself, and how important one factor is over another is very case
specific. The factors are:
- Whether or not the goods or services using the same mark
compete with one another. Marks that are used on similar or related goods or
services are more likely to confuse consumers as to the source of those
goods or services. Even where the plaintiff's products are not exactly
similar, the court may in some cases consider how likely the plaintiff is in
the future to sell similar products.
- Whether or not the goods or services are being marketed through the same stores or channels of
distribution.
- Whether or not the alleged infringer intended to trick
consumers in order to "cash in" on the plaintiff's business good
will.
- Whether the marks are similar in appearance, phonetic
sound, or meaning.
- How careful the consumer is likely to be prior to
purchasing. The more sophisticated the consumer (e.g. business owners versus
children), or the more expensive the product, then the more discriminating
the consumer is expected to be, and the less likely confusion will be
attributed to them).
- Whether or not the companies are accessing overlapping
customer bases. If the companies both sell largely to senior citizens, to
teachers, or to home-based business owners, there is more likely to be
consumer confusion.
- The legal strength of each of the marks. The greater the
public recognition of a mark as a source identifier, the more likely that
similar uses will be confusing.
- Whether there has been any actual confusion. If so, this is
not conclusive evidence of likelihood of confusion, but must be weighed
together with the other factors.
Purpose of the confusion standard:
Trademark law frequently refers to the confusion of consumers or the probable
confusion of consumers. The reason for this is that trademark law is not as much
about protecting business interests as it is to protect consumers. By providing
a business with the incentive increased profits by the grant of exclusive rights
in a mark, and imposing a duty upon that owner to stop others from using that
same mark on competing products, trademark law gives consumers some amount of
control over the quality of products they buy. If one brand pleased the customer
more than another, that customer can easily find the brand they liked without
having to read ingredient labels or scrutinize packaging, materials and
workmanship. This saves the consumer time, and allows him or her to make
informed purchase decisions. For this reason, the standard of when a trademark
right is being infringed has entirely to do with whether or not a consumer is
going to be confused, and thus deprived of making informed purchasing decisions.
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