WHAT IS “CONFUSINGLY SIMILAR” IN TRADEMARK DISPUTES?

Ivan Hoffman, B.A., J.D.

         Trademarks are designed to protect consumers.  That may seem strange since trademark owners are the ones doing the registering and protecting of the marks.  However, at the heart of trademark law is the principle that the consumer should have the right to rely on a trademark and not be confused into mistaking the source of the goods or services represented by the mark.  In other words, the trademark law is designed to further the rights of the consumer to believe that the goods and services bearing a mark are coming from the source the consumer has come to associate with the mark.   Of course there are economic interests for the mark owner in preventing confusion in the marketplace for if there is such confusion, there could be a marked effect on the value of the owner’s mark or “brand.”  In the landmark 1973 case of In re: E.I. Dupont de Nemours & Co. the Court stated: 

The history of trademark litigation and the substantial body of law to which it relates demonstrate the businessman's alertness in seeking to enjoin confusion. In so doing he guards both his pocketbook and the public interest. 

          And in the case of In re Shell Oil Co., 992 F.2d 1204 (1993), the Court stated: 

[E]ven if the goods in question are different from, and thus not related to, one another in kind, the same goods can be related in the mind of the consuming public as to the origin of the goods. It is this sense of relatedness that matters in the likelihood of confusion analysis. 

          Indeed, this principle is so fundamental to trademark protection that even though the parties themselves may have agreed to the contrary, the courts have the obligation to protect the consumer.  Indeed, in the Dupont case, Dupont had a product called “Rally” which was a brand used for a combination polishing, glazing and cleaning agent for use on automobiles compared to a product with the same name used as an all purpose detergent from a company called Horizon. 

          There was an agreement between the parties wherein Dupont had acquired that product for automobile cleaning from Horizon and Horizon agreed not to sell to that market under that name.  However, the Court ignored that agreement because it felt that the confusion in the marketplace took precedence.  It stated: 

It is our opinion that despite any agreement between the parties the public interest cannot be ignored, and when the goods of the parties are as closely related as those here involved, their sale under the identical mark "RALLY" would be likely to result in confusion, mistake, or deception. cf. In re Avedis Zildjian Co., 157 U.S. p. 2517 [394 F.2d 860, 55 CCPA 1126] (CCPA, 1968); and In re Continental Banking Company, 156 U.S. p. 2514 [390 F.2d 747, 55 CCPA 967] (CCPA, 1968). * * * The mere fact that registrant may have precluded itself from selling an automobile cleaner under the mark "RALLY" does not overcome the likelihood of confusion as set forth in Section 2(d) of the Trademark Statute.

          Therefore, if there are marks that are “confusingly similar,” the courts’ obligation is to look at the competing marks from the point of view of the consumer in the marketplace. On the other hand, even if the marks are very similar, if they are not marketed in such a way that consumers would not necessarily encounter both and thus not likely to be confused as to source, then it may be that they are not “confusingly similar.” 

          But it is not just the courts that follow these rules.  When you are considering applying for a trademark, you should have a full national trademark search performed.  When the report is issued, it should be reviewed by a trademark attorney applying the same rules as used by the courts and as discussed in this article.  The same standards are those that the USPTO applies in deciding whether a mark can be registered.  So whether you have a mark and are contesting another’s use or you are applying for a mark, these are the issues you will be facing.  Read “Should I Register My Trademarks?”

          The trademark law of the United States (“The Lanham Act”) is found in 15 United States Code.  Section 1052 provides in part:

No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it . . .

(d) Consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive. . . .

          The Dupont Court explained section 2 (d) in part as follows: 

But the question of confusion is related not to the nature of the mark but to its effect "when applied to the goods of the applicant." The only relevant application is made in the marketplace. The words "when applied" do not refer to a mental exercise, but to all of the known circumstances surrounding use of the mark.

          In other words, the conflicts between the marks are significant but the real determining factors depend on the manner that the marks are used and that refers to use within a marketplace and as to consumers. 

          The way the courts and the USPTO examine competing marks depend on a set of standards that, although read objectively, are frequently subjective in how they are resolved.  Furthermore, since trademark infringement (similar issues apply to claims of dilution) is not limited to the exact same marks but can be found if one mark is confusingly similar to (or dilutes) the other party’s mark.  Reflecting the above subjectivity, the Dupont Court stated that that: 

[t]here is no litmus rule which can provide a ready guide to all cases.  

          The standards outlined by the Dupont court are as follows: 

In testing for likelihood of confusion under Sec. 2(d), therefore, the following, when of record, must be considered: 

(1)   The similarity or dissimilarity of the marks in their entireties 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. 

           These first 2 related to a comparison of the marks themselves and to the goods or services to which the marks apply. 

(3)   The similarity or dissimilarity of established, likely-to-continue trade channels.

 

(4)   The conditions under which and buyers to whom sales are made, i. e. "impulse" vs. careful, sophisticated purchasing. 

          The above 2 relate to the marketing using those marks.  Are the markets the same or nearly the same or overlapping.  Note that the price points of the goods or services is relevant since courts believe that the lower the prices, the more likely the consumer might purchase the goods or services without examining the different marks. 

(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.

 

(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 owner of prior mark and indicative of lack of confusion. 

          The above relates to agreements that might be reached between the owners of the “competing” marks, such as in the Dupont situation.  

(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.

          Not all of the elements are going to be relevant in any given situation and even where they are, the weight accorded to those elements may vary from situation to situation.  The more similar the marks are the less relevant the markets are.   However, if the markets are similar, even marks that are not all that similar may be held to be confusingly similar.   

          Furthermore, even though you may be seeking registration or making a claim in regard to use in a given set of classifications, there may be conflicts between your mark and others’ marks in other classifications if your mark presents potential confusion to the consumer as to the source of your mark and the other mark in those other classifications.   

          So there are 2 issues here: one is whether you will be able to even register your mark or will the application be rejected by the USPTO because of such potential confusion.  The second issue is that even if you pass the initial threshold at the USPTO, the owners of other marks can either file an opposition when your pending mark is published or bring cancellation proceedings or suit after registration if you obtain registration. 

Conclusion 

          Making these decisions can be complex.  If you are seeking registration, there may be significant marketing dollars that are planned and you do not want to start that marketing with a potential conflict on your hand.  If you are the owner of a mark, you want to be able to legally protect your brand from others.   There may be other legal issues as well. 

          Consult with an experienced trademark attorney before proceeding. 

Copyright 2018 Ivan Hoffman.  All Rights Reserved.

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This article is not legal advice and is not intended as legal advice.  This article is intended to provide only general, non-specific legal information.  This article is not intended to cover all the issues related to the topic discussed.  You should not rely on this article in any manner whatsoever and you should not draw any conclusions of any sort from this article.  The specific facts that apply to your matter may make the outcome different than would be anticipated by you.  This article is based on United States laws but the laws of other countries may be different.  You should consult with an attorney familiar with the issues and the laws of your country.  This article does not create any attorney client relationship and is not a solicitation. 

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