15 U.S.C. §1114, also known as §32 of the Lanham Act, defines infringement of a registered trademark, service mark, collective or certification mark (hereinafter collectively referred to as “trademarks”) as the unauthorized reproducing, counterfeiting, copying, or colorably imitating a registered trademark in conjunction with selling, offering to sell, advertising or distributing goods and/or services in such a way as to be likely to cause confusion, mistake or deception. 11 U.S.C. §1114(1) 15 U.S.C. §1125, also known as §43 of the Lanham Act, pro
vides a similar definition to be used in cases involving unregistered trademarks. Both statutes forbid the use of a trademark when that use causes a likelihood of confusion among the relevant consuming public. The likelihood of confusion standard, that Courts use to analyze infringement actions, is literally built into the federal Trademark Statute (the Lanham Act).
When Courts analyze trademarks to determine if they are confusingly similar, what they are really trying to do is place themselves in the shoes of a theoretical consumer that is part of the expected market for a particular product or service. A likelihood of confusion is just that, a likelihood – not a possibility or a probability of consumer confusion.
So what are consumers supposed to get confused about when one business copies or colorably imitates another business’s trademark? Trademarks are protected based upon two basic policy considerations. The first consideration is preventing consumer confusion about the source of a product or service, even if that source is not known. This doctrine is in place to prevent consumers from erroneously believing that a trademark owner produces someone else’s products or is otherwise affiliated with that producer or product. The second policy consideration is the prevention of one business profiting from the goodwill generated by another business. As a result, the infringement inquiry centers around whether the mark at issue is likely to confuse consumers into thinking that someone else has produced a product or service or is otherwise associated with said product or service.
In cases in which Business A uses the trademark of Business B when selling Business A’s products or services, the inquiry into the likelihood of confusion is understandably brief. This conduct is referred to as “passing off.” However, a large number of the trademark disputes consist of two businesses that have adopted similar trademarks for similar or related services. In those cases, a detailed inquiry into the similarities of the marks and their uses becomes necessary. Each Federal Circuit has adopted a very similar list of factors to analyze trademark infringement in these situations, but there is not a lot of difference in how each of these lists of factors is analyzed. 5-5 Gilson on Trademarks § 5.02 (2017).
The famous Polaroid Factors that are studied in a lot of law school classrooms comes from the Second Circuit. (see Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir. 1961)). In the Fourth Circuit, the factors are sometimes referred to as the Pizzeria Uno Factors. Pizzeria Uno Corp. v. Temple, 747 F.2d 1522 (4th Cir. 1984). The factors articulated by Pizzeria Uno and later cases include: the strength or distinctiveness of the mark; the similarity of the two marks; the similarity of the goods/services the marks identify; the similarity of the facilities the two parties use in their businesses; the similarity of the advertising used by the two parties; the defendant’s intent; actual confusion; the proximity of the products as they are actually sold; the probability that the senior mark owner will “bridge the gap” by entering the defendant’s market; the quality of the defendant’s product in relationship to the quality of the senior mark owner’s product; and the sophistication of the buyers. (see 5-5 Gilson on Trademarks § 5.02 (2017)) While the list is quite daunting, the vast majority of infringement disputes center on the similarity of the trademarks in appearance, sound and meaning and the similarity of the goods or services with which the trademarks are used – issues that are explored in the next article “How are Donuts and Coffee Confusingly Similar under Section 2(d)?”
Waiting until you receive a threat of a trademark infringement lawsuit is an expensive way to find out that you cannot continue to use a brand name that already represents an investment in time, energy and money. Consult with a qualified attorney to discuss how best to protect your brand or business name.