What is “Likelihood of Confusion” in Trademark Law?

"Likelihood of confusion" is a term in trademark law which measures how likely it is for the average consumer to confuse the products or services of two brands.
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by | Last updated Mar 4, 2020 | Published on Jan 4, 2019 | Intellectual Property Law

In the United States, many trademark infringement cases come down to questions about “likelihood of confusion.”

This term refers to how likely it is for a consumer to confuse one intellectual property with another.

If a buyer can easily confuse your product or service with another business’s, you might be in danger of committing trademark infringement.

In this article, we’ll go over how likelihood of confusion can affect your trademark infringement case. We’ll also talk about the Polaroid Factors, which federal courts use to determine likelihood of confusion.

What is Trademark Infringement?

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Trademark infringement is the unauthorized use of intellectual property in commerce in a way that is “likely to cause confusion, deception, or mistake about” a good or service’s source.

However, trademark infringement doesn’t necessarily have to be intentional.

Instead, courts decide trademark infringement cases primarily by looking at whether or not the average consumer would be confused by the mark’s use.

If the court finds that one business infringed on another’s trademark, there could be substantial consequences. In most cases, the court will order the infringing business to stop using the mark.

However, a side effect of such a ruling is that the infringing business could also end up with civil proceedings against them.

What is Likelihood of Confusion?

As mentioned above, likelihood of confusion is the most important factor in deciding trademark infringement cases.

To quickly summarize, likelihood of confusion is essentially the probability that the average consumer would confuse one brand’s products or services for another’s.

The most common way of determining likelihood of confusion is the use of the Polaroid Factors.

Named after the 1961 case Polaroid Corp. Vs. Polarad Elects. Corp., federal Intellectual Property courts use these tests to determine the likelihood of confusion between two brands.

The Polaroid Factors

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In total, there are eight Polaroid Factors. Each one describes a different piece of evidence that the court may consider in an infringement case.

No one factor is inherently more important than any other. Instead, the court will make its deicision based on the specific facts of the case.

1. Strength of the Mark

In most cases, the first factor that the court will consider is the strength of the senior trademark (meaning the one that was used in commerce first).

This means examining the specificity of the trademark in question.

Names and logos which resemble highly specific trademarks are more likely to show intentional infringement by the defendant.

For this reason, courts are more likely to favor plaintiffs with fanciful or distinctive trademarks (“IKEA”) over merely descriptive marks (“The Furniture Store”).

2. Similarity of the Marks

Another very important factor is the similarity of the two marks. If the mark concerns a word, the court will consider both visual and auditory similarity.

For example, a baking shop named “White Flour” and an edible arrangement business called “White Flower Arrangements” might be considered infringing depending on certain other factors.

Similarly, depending on the type of product, extreme visual similarity may be sufficient to prove infringement as well.

 3. Proximity of Products

This factor refers to the relatedness of the products, and the similarity of their consumers.

For example, products and services within the same trademark class are usually thought to be in closer proximity than those in separate trademark classes.

The closer the proximity of the two brands, the more likely it is that infringement has taken place.

4. Bridging the Gap

This factor refers to the likelihood that the holder of the senior mark will expand into the market of the alleged infringer.

In such a case, the court may decide to issue an injunction against the alleged infringer to avoid future confusion.

5. Actual Confusion

Simply put, actual confusion refers to customer testimony proving that confusion between the products has already taken place.

While actual confusion can be hard to prove, it makes for a very strong case from the plaintiff’s perspective.

Additionally, proof of actual confusion can be used to show that the plaintiff has suffered monetary losses due to the infringement, and therefore deserves to be awarded damages.

6. Good Faith

This factor refers to whether or not the holder of the junior mark (the one that was registered last) was deliberately trying to create customer confusion or not.

In most cases, this comes down to whether or not the alleged infringer knew that the senior mark existed.

Courts are more likely to side with defendants who were unaware of the senior mark’s existence.

7. Quality of Goods

The court will also consider whether the defendant’s goods or services are obviously inferior to those of the plaintiff.

The court asks this question because it assumes that consumers will typically prefer an all-around superior product.

Thus, if consumers continue to purchase an inferior product, it may indicate that there is confusion surrounding the brand.

8. Sophistication of the Buyer

Intellectual property courts will also consider the average consumer’s knowledge regarding the product.

Products targeted at more knowledgeable or expert audiences are less likely to cause confusion.

Similarly, the court usually assumes that a buyer will exercise greater care over a more expensive product. Thus, infringement is less likely among such products.

Fair Use

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On the other hand, not every circumstance which generates confusion is trademark infringement.

In particular, comparative advertising, as well as nominal and non-commercial use of trademarks, may count as fair use.

For example, courts have generally ruled that the following are all fair use, even if they occasionally result in minor confusion among customers:

  • Comparative use of a trademarked brand (for example, claiming that one product is superior to another).
  • Use of a trademarked brand to indicate compatibility (such as advertising batteries by listing products that they can be used to power).
  • Non-monetary use of trademarked brands (such as the use of trademarked names and logos in art).

Conclusion

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Determining likelihood of confusion is one of the most complicated parts of a trademark infringement case.

For this reason, it’s critical to consult an intellectual property lawyer whenever you encounter questions concerning trademarks.

Trademark infringement lawsuits are time-consuming, expensive, and a major impediment to any business.

By talking over issues with an experienced trademark attorney before using a new name, logo, or slogan in commerce, you can decrease your chance of trouble and lost profits down the line.

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Jacob Tingen

Jacob graduated from the University of Richmond School of Law and was accepted to the Virginia Bar in 2012. Less than 30 days after being admitted to the bar, Jacob launched his own legal practice. Read More.

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