Confusion about Confusion

How do you know whether a trademark infringement lawsuit will be successful?

What do you do when someone else, especially a competitor, is using a name that is similar to yours? Besides proving you own an enforceable trademark (a topic worthy of its own post), you will have to prove a likelihood of confusion. How do you prove that? The answer comes down to every lawyer's favorite type of analysis: a factor test.

In the Eleventh Circuit, which encompasses Florida, Georgia, and Alabama, courts will look at the following factors to determine whether there is a likelihood of confusion:

• Strength of the mark;

• Similarity of the marks;

• Similarity of the products or services;

• Similarity of retail outlets and customers;

• Similarity of advertising media;

• Intent; and

• Existence of actual confusion

The strength of the mark and evidence of actual confusion are the most important factors in the Eleventh Circuit. When referring to "strength," courts are actually referring to the type of mark and its level of distinctiveness: (1) generic, (2) descriptive, (3) suggestive, and (4) arbitrary or fanciful.

"Generic" marks suggest the thing or service itself. An apple salesman would have a generic mark if he named his store "APPLES," for example.

"Descriptive" marks identify a characteristic or quality of a good/service. A store selling apples having the name "APPLE STORE OF AMERICA" would be descriptive. Descriptive marks can become protectable after acquiring distinctiveness. For example, "BANK OF AMERICA" is descriptive but has been in use for so long and consumers so strongly associate the name with the bank that the term has become protectable.

"Suggestive" marks require a level of effort of the imagination of the consumer to be understood as descriptive. An apple store named "GRANNY SMITH" would likely be found to be suggestive.

Finally, "arbitrary" or "fanciful" marks bear no relationship to the goods/service. The term "APPLE" for computers is a good example.

Other federal circuits add other factors such as likely degree of purchaser care (Sixth Circuit covering Michigan, Ohio, Kentucky, and Tennessee), price of the goods (Third Circuit covering Pennsylvania, New Jersey, and Delaware), length of time the defendant has used the mark without evidence of actual confusion (also Third Circuit), the quality of the products (Second Circuit covering New York, Connecticut, and Vermont), and likelihood of expansion of product lines (Ninth Circuit covering California and the west coast states).

As can be seen, the analysis performed to determine whether there is a likelihood of confusion is geographically important. Thus, where a trademark infringement claim is brought may have an outsized impact on the viability of the claim.

If you feel like your trademark rights are being infringed or you are being accused of infringement, it is important to make sure you have the right attorney on your side. Call or email if you need assistance.

Disclaimer: I'm an attorney but I'm not your attorney. This is not meant as legal advice and you should consult with the attorney of your choice. This post is meant for informational purposes only. The views expressed are the opinion of the author writing in his individual capacity.