25 Nov Likelihood of Confusion in Trademarks and Branding
For new start-up companies or small business, establishing a brand is necessary. Establishing a brand takes time, effort, and probably a bit of money. But when it comes to establishing a brand that may be trademarked, it is vitally important to consider whether your potential trademark will cause confusion with another trademark.
The two most common reasons why a trademark application might be rejected or challenged are lack of distinctiveness or likelihood of confusion. This post will discuss some of the factors that need to be considered to avoid a “likelihood of confusion” determination by the Trademark Examining Attorney or a challenge by an existing trademark holder (including common law trademark holders).
Thirty-three years ago, the U.S. Court of Customs and Patent Appeals (which at the time oversaw trademark appeals as well) formulated a long list of factors to be considered to determine whether there was a likelihood of confusion between two trademark. I will examine four of the most basic factors. There are other factors and not all the factors need to be considered in the assessment. Unfortunately, there are few bright-line rules in this arena because everything is so very fact specific.
The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. This may be the most basic of the factors. If looking at the marks, are they similar on their face? If spoken aloud, do they sound the same? Are the words similar and carry the same connotation in the reasonable consumer’s mind? The greater the similarity between marks, the less likely the newer mark will be registered. This is particularly apt when the type of goods or services being offered are similar. The challenge is when the marks either need to or for commercial purposes would prefer to include similar terms. A common battle in the craft beer world is the use of I.P.A. Writing out India Pale Ale may not be desirable, but when many breweries are brewing IPAs, the commonality of the letters, their placement in a logo, or similarities in color schemes can be grounds for denial of the trademark or a challenge to the proposed trademark.
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. If the goods/services being offered are too similar, the greater the chance for likelihood of confusion. Put another way, if the goods are dissimilar enough, then the applied-for trademark is more likely to be registered. The best example out there is “apple.” The Washington Apple Grower’s Association has a trademark on “Washington Apples” for the fruit grown and shipped from Washington State. But Apple computers uses the word “apple” for computer and consumer electronics (among other things). No one is likely to confuse a fruit for a computer. So the trademarks can coexist without the likelihood of confusion in the minds of consumers as to the products being offered in commerce. An interesting case (decided using a slightly different test than the DuPont factors) dealing with similar goods is A&H Sportswear, Inc. v. Victoria’s Secret Stores, Inc., 237 F.3d 198 (3rd Cir. 2000) which dealt with the likely confusion between A&H’s Miraclesuit swimsuit and Victoria’s Secret’s Miracle Bra swimsuit. (admittedly it is something of a trademark law nerd read)
The similarity or dissimilarity of established, likely-to-continue trade channels. Even if the goods are similar, are the goods or services sold in similar or the same trade channels so that it is possible for a reasonable consumer to encounter both companies goods/services? So assume Company A is selling sterilizing cleaners called Surface SteriClean that are used in hospitals and doctors offices and Company B is selling sterilizing cleaners called Prep Surface Steri-Clean to the food industry. On a strictly similarity scale, there could be some similarity in the trademarks on facial examination. But would clients of either company be likely to be in the market for both cleaners? The person challenging the trademark registration would have to show that there is a possibility of client cross-over and thus a likelihood of confusion. It would be argued that the two trade channels are sufficiently different that their is little likelihood in the minds of consumers of either good. This kind of argument works best when your customer basis is B2B or institutional because the consumers are considered to be more sophisticated. But if you are selling B2C, you may have a more difficult time, but not an impossible task, showing different trade channels. This is particularly true when looking at common goods, like staple foods or paper towels. But if the goods are specialty items, say crocheting yarn versus fishing line, you might be able to sufficiently distinguish your trade channels.
The fame of the prior mark (sales, advertising, length of use). Simply put, if a potential infringer is not making an effort to distinguish themselves from their more famous competitor, the more likely you are to see an infringement. These kinds of cases often fall into the category of trademark dilution as well as trademark infringement. For one of the most famous cases involved Victoria’s Secret and Victor’s Secret and later Victor’s Little Secret. Victor’s Secret was a small business selling sex toys and of course Victoria’s Secret is the largest seller of lingerie. Although a trademark dilution case on its face,this case does demonstrate that Victor’s Secret was trying to capitalize on the Victoria’s Secret brand to fool consumers into a connection between the companies that did not exist. Victoria’s Secret is one of those brand source identifiers that is immediately recognizable and carries such fame that any similarity to Victoria’s Secret will likely be problematic, even if the goods being sold are gumball and candy machines. Many people would immediately associate even candy products with the lingerie brand, thus creating a likelihood of confusion as to the source of the goods.
These first four factors are just some of the potential factors to be assessed. Even if your proposed trademark passes muster on these four factors, there are others to be considered. The DuPont factors are just one test that is used to determine if there is a likelihood of confusion. Many courts have formulated similar tests, that may have one or more slight tweaks. So a trademark search and evaluation by a trademark attorney is vital before you spend thousands of dollars on a new business or marketing strategy.
The 2 Sentence Takeaway
When a company is planning to launch a new advertising effort, it may be worth the expense to ensure that the new effort will not be trampling on the trademarks of other companies. Get a legal review to make sure your proposed advertising, your new company or your re-brand won’t run afoul of trademark infringement. At the end of the day, it will save you money.
If you are considering a new business or a new marketing efforts, please give me a call to do a thorough trademark review.