Factoring The Likelihood of Confusion Factors

The key question in a trademark infringement case is whether the defendant is using a mark that is "likely to cause confusion, or to cause mistake, or to deceive."  (See 15 U.S.C. § 1114, allowing a lawsuit for infringement of a federally registered trademark, and 15 U.S.C. § 1125(a), allowing a suit for infringement of mark that is not registered but  has come to symbolize its owner's goods or services.)

To give some examples, it was the question the court had to grapple with when

• the Polaroid Corporation sued a small electronics company using the trademark POLARAD;
• the makers of BEANIE BABIES stuffed animals sued a company selling plush toy race cars under the BEANIE RACERS trademark; and
• the Duluth News-Tribune sued another paper that started using the mark SATURDAY DAILY NEWS TRIBUNE in overlapping markets.

At first blush, it might seem like a simple question, but it is not just a matter of asking whether the marks are similar.  For even identical marks might be used on different products, or in different markets. (Consider DELTA for airlines and for faucets, or LEANING TOWER OF PIZZA, for pizzerias in different towns.)  And the federal statutes give no indication of the factors that a court should consider in deciding whether confusion is likely.

So the different federal circuit courts have adopted different lists of factors to determine whether there is a "likelihood of confusion" in a given case.  They are all trying to determine the same thing, but they approach it in different ways.

The Federal Circuit, and the Trademark Trial and Appeal Board, for example, look at thirteen different factors, including "[t]he similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression," and "[t]he number and nature of similar marks in use on similar goods."  The Eighth Circuit seems to ask the fewest questions, with six factors including "the degree to which the products compete with each other" and "the alleged infringer's intent to 'pass off' its goods as those of the trade dress owner."

But do the different approaches lead to any practical difference?  Even with ostensibly different sets of factors, aren't the courts really asking the same things?  Is it perhaps just a matter of "you know it when you see it?"

In upcoming posts I'll look at each circuit's test and how it's been applied in a recent case and see whether that suggests any answers to these questions.