The central issue in any trademark infringement claim under the Lanham Act is whether the defendant's mark is likely to cause consumer confusion. To successfully argue this pivotal issue, counsel should understand the relevant law and key considerations governing the likelihood of confusion analysis.
The Lanham Act creates causes of action for infringement of:
Trademarks or trade dress registered with the US Patent and Trademark Office (USPTO), under Section 32(1) (15 U.S.C. § 1114(1)).
Unregistered common law trademarks and trade dress, under Section 43(a) (15 U.S.C. § 1125(a); for more information, see Lanham Act Section 43(a) Claims on Practical Law).
To prevail on a trademark infringement claim under either Section 32(1) or 43(a), the plaintiff must prove that:
The plaintiff owns a valid, protectable trademark or trade dress.
The defendant used the mark or trade dress in commerce without authorization after the plaintiff obtained trademark rights.
The defendant's use of the mark or trade dress is likely to cause consumer confusion.
This article addresses the often-disputed likelihood of consumer confusion element of a trademark infringement claim. It explains:
What is meant by the term likelihood of confusion, as well as the applicable burden of proof.
Factors courts consider in evaluating the likelihood of confusion.
How courts weigh the likelihood of confusion factors.
Key considerations for cases involving reverse confusion.
(For more on the analysis of the likelihood of confusion factors in reverse confusion cases and additional forms of actionable confusion, including initial interest confusion and post-sale confusion, see Trademark Litigation: Likelihood of Confusion on Practical Law.)
Threshold Inquiry: Likelihood of Confusion
Likelihood of consumer confusion is the core issue in any trademark infringement action under the Lanham Act (15 U.S.C. §§ 1114(1)(a) and 1125(a)(1)). Courts evaluate whether the defendant's trademark, trade name, or trade dress is likely to cause confusion:
Between the plaintiff's and the defendant's goods or services, for example, by creating a mistaken belief that the parties' goods or services are the same or part of a common line.
About the source of the parties' goods or services, for example, by creating a mistaken belief that the plaintiff is the source of the defendant's goods or services.
Regarding sponsorship, affiliation, or connection between the plaintiff and the defendant, or their goods or services, for example, by creating a mistaken belief that the plaintiff authorized or licensed the defendant's use.
Likelihood of confusion means a probability, not a mere possibility, of confusion (see Streamline Prod. Sys., Inc. v. Streamline Mfg., Inc., 851 F.3d 440, 453 (5th Cir. 2017); Nora Beverages, Inc. v. Perrier Grp. of Am., Inc., 269 F.3d 114, 121 (2d Cir. 2001); Rodeo Collection, Ltd. v. W. Seventh, 812 F.2d 1215, 1217 (9th Cir. 1987), abrogated on other grounds by eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388, 393 (2006)).
Confusion of Non-Purchasers
Courts often state that the relevant inquiry is whether actual or potential purchasers of the parties' goods or services are likely to be confused. However, the Lanham Act is not limited to purchaser confusion (15 U.S.C. § 1052(d)). Therefore, many courts hold that confusion of relevant non-purchasers is actionable, including confusion among:
The general public in the post-sale context (see, for example, Gen. Motors Corp. v. Keystone Auto. Indus., Inc., 453 F.3d 351, 356 (6th Cir. 2006); Hermès Int'l v. Lederer de Paris Fifth Ave., Inc., 219 F.3d 104, 108-09 (2d Cir. 2000)).
Brokers and suppliers (see, for example, Arrowpoint Cap. Corp. v. Arrowpoint Asset Mgmt., LLC, 793 F.3d 313, 320-21 (3d Cir. 2015) (holding that the district court erred in discounting evidence of actual confusion of brokers and dealers); Theia Techs. LLC v. Theia Grp., Inc., 2021 WL 291313, at *27 (E.D. Pa. Jan. 28, 2021) (holding that actual confusion of suppliers is relevant to the likelihood of confusion analysis)).
Non-consumers in a position to influence purchasing decisions or any person whose confusion can harm the trademark owner's reputation (see, for example, Rearden LLC v. Rearden Commerce, Inc., 683 F.3d 1190, 1214 (9th Cir. 2012) (acknowledging that confusion of non-consumers could influence consumers); Beacon Mut. Ins. Co. v. OneBeacon Ins. Grp., 376 F.3d 8, 10 (1st Cir. 2004) (noting that a workers' compensation insurance company could be harmed by confusion that results in misdirected claim forms, medical records, and legal correspondence)).
Confusion of persons with no knowledge of or interest in the parties' goods or services is generally irrelevant (see Estee Lauder Inc. v. The Gap, Inc., 108 F.3d 1503, 1511 (2d Cir. 1997)).
Burden of Proof
The plaintiff bears the burden of proving likelihood of confusion by a preponderance of the evidence (KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 118-20 (2004)). The plaintiff must show that an appreciable number of ordinarily prudent purchasers are likely to be confused because of the defendant's mark (Savin Corp. v. Savin Grp., 391 F.3d 439, 456 (2d Cir. 2004)).
To prove a likelihood of confusion, a plaintiff:
Must demonstrate that the multi-factor likelihood of confusion test of the governing circuit supports that finding (see Likelihood of Confusion Test below).
May present a likelihood of confusion survey that supports that finding. Although a plaintiff is not required to submit a survey, some courts have drawn an adverse inference from a plaintiff's failure to conduct a survey when it has the resources to do so. Counsel should always research the presiding judge's view of trademark surveys. (For more on likelihood of confusion surveys, see Trademark Litigation: Online Consumer Surveys on Practical Law.)
Likelihood of Confusion Test
To evaluate the likelihood of confusion, a court applies the multi-factor likelihood of confusion test for its circuit. The tests vary slightly from circuit to circuit, but generally include most or all of the following factors:
The strength of the plaintiff's trademark (see Strength of the Plaintiff's Mark below).
The similarity of the parties' marks (see Similarity of the Parties' Marks below).
The relatedness of the parties' goods or services (see Relatedness of the Parties' Goods or Services below).
The likelihood that the plaintiff will expand its goods or services to include the defendant's goods or services (also referred to as bridging the gap).
The similarity of the parties' trade channels and target consumers.
Evidence of actual consumer confusion.
The defendant's wrongful intent in adopting the allegedly infringing mark.
The sophistication of potential purchasers of the defendant's allegedly infringing goods or services.
The quality of the defendant's allegedly infringing goods or services.
(For more on assessing the factors not fully addressed in this excerpt, namely the likelihood that the plaintiff will bridge the gap, the similarity of the parties' trade channels and target consumers, evidence of actual confusion, the defendant's intent, consumer sophistication and degree of care, and the quality of the defendant's goods or services, see Trademark Litigation: Likelihood of Confusion on Practical Law; for more on the likelihood of confusion test applied in each circuit, see Likelihood of Confusion Toolkit and Trademark Litigation: Likelihood of Confusion Tests by Circuit Chart on Practical Law.)
Strength of the Plaintiff's Mark
When determining the likelihood of confusion, courts examine the strength of the plaintiff's trademark. Stronger marks stand out more and are therefore better able to identify the source of the mark owner's goods or services.
The strength of the plaintiff's trademark is measured on a continuum from strong to weak. The stronger the mark, the more protection it receives and the greater the likelihood that confusion will occur (PACCAR Inc. v. TeleScan Techs., L.L.C., 319 F.3d 243, 251 (6th Cir. 2003), abrogated on other grounds by KP Permanent Make-Up, 543 U.S. at 121-22). Conversely, the weaker the mark, the less trademark protection the mark receives and the lower the likelihood that confusion will occur (TCPIP Holding Co. v. Haar Commc'ns Inc., 244 F.3d 88, 100-01 (2d Cir. 2001)).
Several courts consider the strength of the plaintiff's trademark to be the most important or one of the most important factors in the likelihood of confusion analysis (see Variety Stores, Inc. v. Wal-Mart Stores, Inc., 888 F.3d 651, 661 (4th Cir. 2018); Frehling Enters., Inc. v. Int'l Select Grp., Inc., 192 F.3d 1330, 1335 (11th Cir. 1999); Quality Inns Int'l, Inc. v. McDonald's Corp., 695 F. Supp. 198, 210 (D. Md. 1988)).
To measure the strength of the plaintiff's trademark, courts examine both the mark's:
Inherent strength, or its distinctiveness.
Acquired strength, or its marketplace recognition. (See, for example, Springboards to Educ., Inc. v. Houston Indep. Sch. Dist., 912 F.3d 805, 814 (5th Cir. 2019); Virgin Enters. Ltd. v. Nawab, 335 F.3d 141, 147 (2d Cir. 2003); see George & Co. v. Imagination Entm't Ltd., 575 F.3d 383, 393 (4th Cir. 2009).)
Other considerations that may affect the strength of the plaintiff's mark include whether there has been:
Third-party use of similar marks in connection with related goods or services.
Federal registration of the trademark under the Lanham Act.
Prior successful enforcement of the plaintiff's rights as a trademark owner against third-party infringers.
Assessing Inherent Strength
Inherent strength, also referred to as conceptual strength, considers the mark's distinctiveness. Trademark distinctiveness is typically classified along a spectrum measuring the obviousness of the connection between the mark and the goods or services to which it refers (see, for example, Network Automation, Inc. v. Advanced Sys. Concepts, Inc., 638 F.3d 1137, 1149 (9th Cir. 2011)). The classifications of inherent strength (in descending order of strength) are:
Coined, fanciful, or arbitrary marks. A coined or fanciful trademark is a unique term created to function as a trademark, for example, CLOROX for bleach and EXXON for gas. An arbitrary mark consists of common words or designs that do not suggest or describe any characteristic of the goods or services, for example, APPLE for computers and GAP for clothing. Coined, fanciful, and arbitrary marks are deemed inherently distinctive and are generally considered the strongest marks (Nutri/System, Inc. v. Con-Stan Indus., Inc., 809 F.2d 601, 605 (9th Cir. 1987)).
Suggestive marks. A suggestive trademark is a mark that requires imagination, thought, and perception to reach a conclusion about the nature of the goods or services, for example, HABITAT for home furnishings and COPPERTONE for sun-tanning products. Suggestive marks are deemed inherently distinctive and protectable (Variety, 888 F.3d at 662; Mil-Mar Shoe Co. v. Shonac Corp., 75 F.3d 1153, 1156 (7th Cir. 1996)). A suggestive mark can be weak or strong, depending on the mark's marketplace recognition (W.W.W. Pharm. Co. v. Gillette Co., 984 F.2d 567, 572-73 (2d Cir. 1993), superseded on other grounds by Deere & Co. v. MTD Prods., Inc., 41 F.3d 39 (2d Cir. 1994)).
Descriptive marks. A descriptive mark immediately conveys information regarding a quality, characteristic, feature, benefit, or purpose of the goods or services, for example, ALO for aloe cream products and BED & BATH for retail store services offering bedroom and bathroom products. Descriptive marks are only protectable if the plaintiff demonstrates that the marks have acquired distinctiveness (Star Indus., Inc. v. Bacardi & Co., 412 F.3d 373, 385 (2d Cir. 2005)). Although descriptive marks are generally weak, they can become strong with substantial marketplace recognition (Am. Rice, Inc. v. Producers Rice Mill, Inc., 518 F.3d 321, 330-31 (5th Cir. 2008)).
Generic terms or phrases. A generic term or phrase is the term or phrase that the relevant purchasing public understands primarily as the common or class name for the goods or services, for example, SOAP for soap goods or RICE for rice goods. Generic terms are not protectable as trademarks (Xtreme Lashes, LLC v. Xtended Beauty, Inc., 576 F.3d 221, 227 (5th Cir. 2009)).
(For more on trademark distinctiveness, see Acquiring Trademark Rights and Registrations on Practical Law.)
Blue sports playbook sketch representing practical legal guidance and strategy.
When determining the category of a mark, courts do not examine the mark in the abstract but rather by reference to the good or service. To prove the degree of inherent strength or weakness of a trademark, the parties may introduce several types of evidence, including:
Survey evidence.
Testimony of a linguist or other industry expert.
Evidence of whether the mark has an established meaning in:
dictionaries; or
trade publications.
When applying to register a mark, an applicant may concede that the mark (or a portion of it) is not inherently distinctive by:
Claiming that the mark has acquired distinctiveness (see Trademark Manual of Examining Procedure (TMEP) § 1212.02(b)).
Disclaiming a part of a mark (see TMEP § 1213.01(d)).
Assessing Acquired Strength
Acquired strength, also referred to as commercial strength, considers the mark's degree of consumer recognition in the marketplace (Virgin, 335 F.3d at 148). To prove a mark's commercial strength, the mark owner may introduce direct evidence, such as consumer testimony or survey evidence. However, mark owners typically prove commercial strength with circumstantial evidence, including evidence of:
The duration of the mark's continuous use.
The extent of advertising of goods and services in connection with the mark, including advertising expenditures.
The sales of goods and services in connection with the mark. Sales evidence should also include evidence of competitor sales for context.
The mark's geographic scope of use.
Unsolicited publicity received by the mark or the goods and services in connection with the mark.
Use of the mark in connection with a range of diverse goods and services.
Intentional copying by third parties.
Some courts hold that acquired strength can be more significant to the strength of the mark factor than conceptual strength (see, for example, Variety, 888 F.3d at 663).
Effect of Third-Party Marks on Strength
When there are many third parties using similar marks in connection with related goods or services, consumer confusion between any two of the marks is less likely because consumers are accustomed to distinguishing between similar marks in the industry. Therefore, third-party use of similar marks in connection with related goods or services weakens a trademark (Kibler v. Hall, II, 843 F.3d 1068, 1074 (6th Cir. 2016); Lang v. Ret. Living Publ'g Co., 949 F.2d 576, 581 (2d Cir. 1991)). While there is no set number of third-party marks needed to show that the plaintiff's mark is weak, one or two third-party marks are unlikely to significantly affect the strength of the plaintiff's mark.
Most courts hold that third-party use of similar marks in connection with goods or services that are unrelated to the parties' goods or services are of little or no relevance (see, for example, PlayNation Play Sys., Inc. v. Velex Corp., 924 F.3d 1159, 1166 (11th Cir. 2019); Morningside Grp. Ltd. v. Morningside Capital Grp., L.L.C., 182 F.3d 133, 139 (2d Cir. 1999); Eclipse Assocs. Ltd. v. Data Gen. Corp., 894 F.2d 1114, 1119 (9th Cir. 1990); but see Bd. of Supervisors v. Smack Apparel Co., 550 F.3d 465, 479 (5th Cir. 2008) (holding that all third-party use, not just use in the plaintiff's industry, may be relevant to the strength of the plaintiff's mark)).
To prove that third-party use of similar marks affects the strength of the owner's mark, courts generally require proof that the third-party marks are in active use and are well-promoted so that consumers recognize them (AutoZone, Inc. v. Strick, 543 F.3d 923, 933 (7th Cir. 2008); Scarves by Vera, Inc. v. Todo Imps. Ltd., 544 F.2d 1167, 1173-74 (2d Cir. 1976)). Several courts hold that evidence of third-party trademark registrations does not prove use of the registered marks in commerce (see, for example, Scarves by Vera, 544 F.2d at 1173-74; Boldface Licensing + Branding v. By Lee Tillett, Inc., 940 F. Supp. 2d 1178, 1191 (C.D. Cal. 2013)).
However, the Federal Circuit and the Trademark Trial and Appeal Board consider third-party registrations relevant to the conceptual strength of the mark at issue (Jack Wolfskin Ausrustung Fur Draussen GmbH v. New Millennium Sports, S.L.U., 797 F.3d 1363, 1373-74 (Fed. Cir. 2015); In re Morinaga Nyugyo Kabushiki Kaisha, 120 U.S.P.Q.2d 1738, 1745 (T.T.A.B. 2016); but see Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1373-74 (Fed. Cir. 2005) (holding that evidence of third-party marks is only probative if it shows that the marks are used and recognized by consumers)).
A defendant can prove third-party use of similar marks by introducing:
Documents and testimony from third-party mark owners regarding the extent and duration of use (including, for example, sales and advertising expenditures). This is generally the only way to show the extent of the mark's use in commerce, which some courts require.
Evidence of advertising of the third-party goods or services in major publications.
Evidence showing how the mark is used in commerce, such as:
a printout of a webpage making the applicable goods or services available for purchase; or
a photograph of an in-store display for the applicable goods or services.
Testimony from persons who purchased the third-party goods or services.
Effect of Registration on Strength
A US trademark registration provides an evidentiary presumption of the validity and distinctiveness of the registered mark for the goods or services covered by the registration. If the registration is less than five years old, then the presumption of validity and distinctiveness is rebuttable (15 U.S.C. § 1115(a); Borinquen Biscuit Corp. v. M.V. Trading Corp., 443 F.3d 112, 117 (1st Cir. 2006)). If a registrant files a declaration of incontestability after five years of registration, then the registration serves as conclusive evidence of the validity and distinctiveness of the mark (15 U.S.C. § 1115(b); Borinquen, 443 F.3d at 117).
Courts disagree on how incontestability affects the overall strength of a mark. Courts have held that:
An incontestable registered mark is strong (see, for example, PlayNation, 924 F.3d at 1166; Sports Auth., Inc. v. Prime Hospitality Corp., 89 F.3d 955, 961 (2d Cir. 1996); Easy Spirit, LLC v. Skechers U.S.A., Inc., 515 F. Supp. 3d 47, 72 (S.D.N.Y. 2021)).
While incontestability establishes distinctiveness, it does not establish the degree of distinctiveness (Therma-Scan, Inc. v. Thermoscan, Inc., 295 F.3d 623, 632 (6th Cir. 2002); Time, Inc. v. Petersen Publ'g Co., 173 F.3d 113, 118 (2d Cir. 1999); Oreck Corp. v. U.S. Floor Sys., Inc., 803 F.2d 166, 171 (5th Cir. 1986); see also Perry v. H.J. Heinz Co. Brands, L.L.C., 994 F.3d 466, 473 (5th Cir. 2021) (recognizing that incontestability does not make a weak mark strong)).
(For more on obtaining and maintaining a federal trademark registration, including filing a declaration of incontestability, see Acquiring Trademark Rights and Registrations and Maintaining Trademark Registrations on Practical Law.)
Effect of Enforcement on Strength
Some courts hold that a trademark owner's successful enforcement of its rights against third-party infringers supports a finding that the mark is strong (see, for example, Morningside, 182 F.3d at 139). However, courts generally acknowledge the cost of trademark enforcement and that a trademark owner is not expected to take legal action against every instance of infringement (see, for example, Elizabeth Taylor Cosmetics Co. v. Annick Goutal, S.A.R.L., 673 F. Supp. 1238, 1248 (S.D.N.Y. 1987)).
Similarity of the Parties' Marks
Most courts hold that the similarity of the marks is one of the most important likelihood of confusion factors (see, for example, A&H Sportswear, Inc. v. Victoria's Secret Stores, Inc., 237 F.3d 198, 216 (3d Cir. 2000); GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 1199, 1205 (9th Cir. 2000)). Counsel should understand:
How courts evaluate the similarity of the marks in the likelihood of confusion analysis.
How a defendant's use of a house mark close to the challenged mark affects the likelihood of confusion analysis.
Arguments counsel can assert when claiming that the parties' marks are similar or dissimilar.
Relevant Considerations When Comparing Marks
When comparing the parties' marks, courts:
Compare the sound, meaning, and appearance of the marks (see, for example, Viacom Int'l v. IJR Cap. Invs., L.L.C., 891 F.3d 178, 193 (5th Cir. 2018); George & Co., 575 F.3d at 396; A&H Sportswear, 237 F.3d at 229).
Compare the parties' trademarks in the context in which consumers will confront the marks in the marketplace (see, for example, Springboards, 912 F.3d at 812; Nabisco, Inc. v. Warner-Lambert Co., 220 F.3d 43, 47 (2d Cir. 2000)). Confusion may not be likely even where the marks are identical when the parties' product packaging and marketing conditions significantly differ (see, for example, Arcona, Inc. v. Farmacy Beauty, LLC, 976 F.3d 1074, 1080-81 (9th Cir. 2020)).
May not dissect the marks and compare the individual components of the marks (referred to as the anti-dissection rule) (see, for example, Strick, 543 F.3d at 931; AutoZone, Inc. v. Tandy Corp., 373 F.3d 786, 795 (6th Cir. 2004)).
May not compare the marks side-by-side because consumers typically do not encounter the marks at the same time (see, for example, Louis Vuitton Malletier v. Dooney & Bourke, Inc., 454 F.3d 108, 117 (2d Cir. 2006)).
May give greater weight to the dominant portion of the mark (see, for example, Variety, 888 F.3d at 664; Xtreme Lashes, 576 F.3d at 228; Ty, Inc. v. Jones Grp., Inc., 237 F.3d 891, 899 (7th Cir. 2001)).
Generally find that the marks are similar if the defendant has added only generic or descriptive terms to the plaintiff's mark (see, for example, N.Y.C. Triathlon, LLC v. NYC Triathlon Club, Inc., 704 F. Supp. 2d 305, 317 (S.D.N.Y. 2010)).
Generally require less similarity for a likelihood of confusion finding when the parties' goods or services are competitive (see, for example, Kos Pharm., Inc. v. Andrx Corp., 369 F.3d 700, 713 (3d Cir. 2004); Marathon Mfg. Co. v. Enerlite Prods. Corp., 767 F.2d 214, 219 (5th Cir. 1985); Reed-Union Corp. v. Turtle Wax, Inc., 869 F. Supp. 1304, 1307 (N.D. Ill. 1994)).
Effect of House Marks
Courts disagree regarding how a defendant's use of its house mark (its corporate name or brand) close to the challenged mark affects the likelihood of confusion analysis. Courts have held that the defendant's use of its house mark:
Lessens the likelihood of confusion because the house mark helps clarify the source of the goods (see, for example, Tandy, 373 F.3d at 796-97; Nabisco, 220 F.3d at 46-47).
Does not lessen the likelihood of confusion because consumers will just assume the defendant is authorized to use the plaintiff's mark (see, for example, Int'l Kennel Club of Chi., Inc. v. Mighty Star, Inc., 846 F.2d 1079, 1088-89 (7th Cir. 1988)).
May increase the likelihood of reverse confusion (see, for example, Americana Trading Inc. v. Russ Berrie & Co., 966 F.2d 1284, 1288 (9th Cir. 1992); see Reverse Confusion below).
Arguing the Similarity of the Marks Factor
Counsel claiming that the parties' marks are similar may argue that:
The marks include the same or similar terms or letters.
The marks are of similar length.
The marks rhyme or include similar emphases or stress patterns.
The common elements of the marks are the dominant elements.
The parties do not use, or do not typically use, their house marks with the marks at issue.
Counsel claiming that the parties' marks are dissimilar may argue that:
The marks contain dissimilar dominant elements.
The marks have different emphases or stress patterns.
The common elements of the marks are descriptive and non-dominant.
The parties' house marks distinguish the marks.
Relatedness of the Parties' Goods or Services
The more closely related the goods or services at issue are to each other, the more likely there will be a likelihood of confusion (Team Tires Plus, Ltd. v. Tires Plus, Inc., 394 F.3d 831, 834 (10th Cir. 2005); Virgin, 335 F.3d at 150; Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1147-48 (9th Cir. 2002)). Related goods or services are those that consumers would reasonably think come from the same source if sold under the same mark (Rearden, 683 F.3d at 1212; Eli Lilly & Co. v. Nat. Answers, Inc., 233 F.3d 456, 463 (7th Cir. 2000); Frehling, 192 F.3d at 1338). Counsel should understand:
How courts evaluate whether the relevant goods or services are related.
Arguments counsel can assert when claiming that the relevant goods or services are related or unrelated.
Relevant Considerations When Comparing Goods and Services
When comparing the parties' goods or services, courts:
Do not require that goods or services be competitive for them to be related (PlayNation, 924 F.3d at 1168; Westchester Media v. PRL USA Holdings, Inc., 214 F.3d 658, 666 (5th Cir. 2000); Fleischmann Distilling Corp. v. Maier Brewing Co., 314 F.2d 149, 159 (9th Cir. 1963)). However, it may be easier to establish a likelihood of confusion when the goods or services are directly competitive (Team Tires, 394 F.3d at 833-34).
May conclude that goods or services in the same industry are not related if they are marketed to different consumers or in ways that would prevent consumers from thinking they come from the same source (see Kibler, 843 F.3d at 1076-77).
Require less proximity between the goods or services for a likelihood of confusion finding when the senior user's mark is strong and the parties' marks are similar (Entrepreneur Media, 279 F.3d at 1148; Katz v. Modiri, 283 F. Supp. 2d 883, 896 (S.D.N.Y. 2003)).
Generally find that complementary goods or services that are commonly used or purchased together are related (see, for example, Fuji Photo Film Co. v. Shinohara Shoji Kabushiki Kaisha, 754 F.2d 591, 598 (5th Cir. 1985)).
May find that goods or services are related even when they are in different trademark classes for purposes of registration with the USPTO (see, for example, Volkswagenwerk Aktiengesellschaft v. Wheeler, 814 F.2d 812, 819 (1st Cir. 1987); Quality Inns, 695 F. Supp. at 210). However, courts sometimes note USPTO classification as part of their overall relatedness analysis given that products and services under the USPTO are classified by type (see, for example, Parenting Unlimited Inc. v. Columbia Pictures Television Inc., 743 F. Supp. 221, 227 (S.D.N.Y. 1990)).
Arguing the Relatedness of the Goods or Services Factor
Counsel claiming that the parties' goods or services are related may argue that they are:
Within a common class of goods or services, defined as narrowly as possible. For example, if one party sells men's shirts and the other party sells men's pants, counsel may argue that both sell men's clothing items under their marks.
Marketed and sold:
to the same consumers; and
through the same trade channels.
Complementary or have similar purposes.
Sold at similar price points.
The types of goods or services that are commonly sold or provided by a single seller. Counsel should try to find advertisements or marketing materials showing both types of goods or services offered by a single seller.
Counsel claiming that the parties' goods or services are unrelated may argue that they are:
Not within a common class of goods or services, or that any common class is too broad and that the goods or services are not part of the same definable sub-class. For example, if one party sells men's pants and the other sells women's skirts, although both parties sell clothing items, counsel may argue that men's apparel and women's apparel are unrelated.
Marketed and sold:
to different consumers or consumer groups; and
through different trade channels or, if sold in the same stores, different areas or sections of the stores.
Sold at different price points.
Unrelated because the challenging party cannot identify any sellers that offer both types of goods or services.
Counsel for both parties should research whether courts have addressed the relatedness of the particular goods or services at issue and cite those decisions in legal briefs if they are helpful.
Weighing the Likelihood of Confusion Factors
When assessing the likelihood of confusion, courts consider all likelihood of confusion factors that are relevant to the case. Whether a factor is relevant or important in any given case depends on the facts (In re Mighty Leaf Tea, 601 F.3d 1342, 1346 (Fed. Cir. 2010); Nat. Organics, Inc. v. Nutraceutical Corp., 426 F.3d 576, 579 (2d Cir. 2005); Brookfield Commc'ns, Inc. v. W. Coast Entm't Corp., 174 F.3d 1036, 1054 (9th Cir. 1999)).
The analysis is not a mechanical process where the party with the most favorable factors wins. Rather, the factors serve as a guide to help the court determine whether consumer confusion is likely. (Eli Lilly, 233 F.3d at 462; Lois Sportswear, U.S.A., Inc. v. Levi Strauss & Co., 799 F.2d 867, 872 (2d Cir. 1986).) The factors are not exhaustive, and courts are free to consider any other factors that are relevant to the likelihood of confusion (Westchester Media, 214 F.3d at 664; Morningside, 182 F.3d at 138-39).
Most courts hold that no one factor can be determinative of the likelihood of confusion (see, for example, Borinquen, 443 F.3d at 120; Kos Pharm, 369 F.3d at 709). However:
The Second Circuit has held that when the marks are so dissimilar that confusion is not possible, a court may find for a defendant based on the similarity of the marks factor alone (Nabisco, 220 F.3d at 46).
Some courts weigh some factors more heavily than others, for example:
several circuits emphasize the importance of the similarity of the marks factor, particularly when the parties' goods or services are competitive (Pom Wonderful LLC v. Hubbard, 775 F.3d 1118, 1127 (9th Cir. 2014); Boston Duck Tours, LP v. Super Duck Tours, LLC, 531 F.3d 1, 26 (1st Cir. 2008); Malletier v. Burlington Coat Factory Warehouse Corp., 426 F.3d 532, 537 (2d Cir. 2005); A&H, 237 F.3d at 216);
the Fourth Circuit emphasizes the importance of the strength of the plaintiff's mark factor (Grayson O Co. v. Agadir Int'l LLC, 856 F.3d 307, 314-15 (4th Cir. 2017));
the Sixth Circuit emphasizes the importance of the similarity of the marks and the strength of the plaintiff's mark factors (Gray v. Meijer, Inc., 295 F.3d 641, 646 (6th Cir. 2002));
the Seventh Circuit emphasizes the importance of the similarity of the marks, defendant's intent, and actual confusion factors (Ziebart Int'l Corp. v. After Mkt. Assocs., Inc., 802 F.2d 220, 226 (7th Cir. 1986)); and
the Eleventh Circuit emphasizes the importance of the type of mark (that is, the strength of the mark) and actual confusion factors (Frehling, 192 F.3d at 1335).
Doubts Resolved in Favor of the Senior User
Some courts hold that when the likelihood of confusion is a close question, doubts are resolved in favor of the senior user (Mighty Leaf, 601 F.3d at 1346; Dr. Seuss Enters., L.P. v. Penguin Books USA, Inc., 109 F.3d 1394, 1404 n.14 (9th Cir. 1997); Dallas Cowboys Football Club, Ltd. v. America's Team Props., Inc., 616 F. Supp. 2d 622, 637 (N.D. Tex. 2009); Trs. of Columbia Univ. v. Columbia/HCA Healthcare Corp., 964 F. Supp. 733, 744 (S.D.N.Y. 1997)).
Question of Law or Fact
The likelihood of confusion is a fact-specific inquiry, but courts disagree on whether it is a purely factual issue. Some courts consider the likelihood of confusion analysis:
A question of fact (Nat'l Bus. Forms & Printing, Inc. v. Ford Motor Co., 671 F.3d 526, 532 (5th Cir. 2012); Wendt v. Host Int'l, Inc., 125 F.3d 806, 812 (9th Cir. 1997); Scandia Down Corp. v. Euroquilt, Inc., 772 F.2d 1423, 1427-28 (7th Cir. 1985)). These courts will still grant summary judgment if there is no genuine issue of disputed fact (Affliction Holdings, LLC v. Utah Vap or Smoke, LLC, 935 F.3d 1112, 1114 (10th Cir. 2019); Surfvivor Media, Inc. v. Survivor Prods., 406 F.3d 625, 628 (9th Cir. 2005); Door Sys., Inc. v. Pro-Line Door Sys., Inc., 83 F.3d 169, 171 (7th Cir. 1996)).
A mixed question of fact and law, that is, one in which:
the determination of each likelihood of confusion factor is a finding of fact; and
the balancing of the factors to determine whether confusion is likely is a question of law. (M2 Software, Inc. v. M2 Commc'ns, Inc., 450 F.3d 1378, 1381 (Fed. Cir. 2006); Malletier, 426 F.3d at 537; Wynn Oil Co. v. Thomas, 839 F.2d 1183, 1186 (6th Cir. 1988).)
Reverse Confusion
Most plaintiffs assert that consumers are likely to think the defendant's goods or services originate from the plaintiff or are otherwise affiliated with the plaintiff or the plaintiff's goods or services. However, in some trademark infringement cases, the plaintiff claims that a more powerful junior user's mark is confusing consumers into believing that the plaintiff's lesser-known goods or services originate from or are otherwise affiliated with the junior user. This is known as reverse confusion.
In reverse confusion cases, the defendant is not seeking to benefit from the goodwill of the plaintiff's mark. However, the trademark owner is still harmed because:
The defendant's mark diminishes the value of the plaintiff's mark as a source indicator (Checkpoint Sys., Inc. v. Check Point Software Techs., Inc., 269 F.3d 270, 301-02 (3d Cir. 2001)).
Consumers may view the plaintiff as the infringer (Banff, Ltd. v. Federated Dep't Stores, Inc., 841 F.2d 486, 490 (2d Cir. 1988)).
Reverse confusion is a theory of how confusion is likely to occur, not a legal claim separate from an ordinary infringement claim. Therefore, a party does not need to plead reverse confusion specifically in a complaint to assert it as the basis for liability. The theory only needs to be compatible with the infringement alleged in the complaint. (Marketquest Grp., Inc. v. BIC Corp., 862 F.3d 927, 932 (9th Cir. 2017), cert. denied, 138 S. Ct. 1988 (2018).)
The fundamental inquiry in reverse confusion cases remains the same as in forward confusion cases, namely whether consumers are likely to be confused. Courts therefore apply the same likelihood of confusion factors that they apply in forward confusion cases (Playmakers LLC v. ESPN, Inc., 376 F.3d 894, 897 (9th Cir. 2004); Checkpoint, 269 F.3d at 302; see Likelihood of Confusion Test above).
The relevant considerations are the same for the analysis of:
The relatedness of the parties' goods or services.
The similarity of the parties' trade channels and target consumers.
The quality of the defendant's goods or services.
However, the relevant considerations differ for the other likelihood of confusion factors, including:
The strength of the parties' marks.
The similarity of the parties' marks.
(For more on other likelihood of confusion factors that involve different considerations in the reverse confusion context, namely the likelihood that the plaintiff will bridge the gap, evidence of actual confusion, the defendant's intent, and consumer sophistication and degree of care, as well as a discussion of initial interest confusion and post-sale confusion, see Trademark Litigation: Likelihood of Confusion on Practical Law.)
Strength of the Parties' Marks in Reverse Confusion Cases
In reverse confusion cases, the conceptual strength inquiry remains focused on the plaintiff's mark (A&H, 237 F.3d at 232). However, the commercial strength inquiry focuses on the defendant's mark to assess its ability to overpower the plaintiff's mark. The plaintiff must show that the defendant's mark is better known than the plaintiff's mark. (Cohn v. Petsmart, Inc., 281 F.3d 837, 841 (9th Cir. 2002); Checkpoint, 269 F.3d at 303-04; Dreamwerks Prod. Grp., Inc. v. SKG Studio, 142 F.3d 1127, 1130 n.5 (9th Cir. 1998).)
Similarity of the Parties' Marks in Reverse Confusion Cases
The similarity of the marks analysis in reverse confusion cases is similar to the analysis in traditional forward confusion cases (see Dreamwerks, 142 F.3d at 1131; Glow Indus., Inc. v. Lopez, 252 F. Supp. 2d 962, 986, 994 (C.D. Cal. 2002)). However, courts typically hold that the defendant's use of a house mark in conjunction with its challenged mark increases the likelihood of confusion. This is because the house mark enhances consumer association between the challenged mark and the defendant, which increases the likelihood that consumers will think goods or services under the plaintiff's similar mark are affiliated with the defendant (Attrezzi, LLC v. Maytag Corp., 436 F.3d 32, 39 (1st Cir. 2006); A&H, 237 F.3d at 230; Sands, Taylor & Wood Co. v. Quaker Oats Co., 978 F.2d 947, 954 (7th Cir. 1992); Americana, 966 F.2d at 1288).