Likelihood of Confusion Factors: What Are They & How Do They Work?

Ben seeks to register his trademark. When researching how to do so, he comes across one term relatively often: "likelihood of confusion." He is confused as to the meaning of this term and what it entails. Don't worry if you're like Ben; you're in the right place.

Trademark registration can be quite complex, particularly when considering the many variables you have to factor in. In this article, we will take you through one of these factors: the likelihood of confusion. However, we also have many resources on our blog to explore if you want more information about trademark applications.

Understanding trademarks

To start, I thought it might be a good idea to take you through what trademarks are.

(Feel free to skip this section if you understand trademarks already.)

As a law major and someone who has done extensive research on this topic, I think I can steer you in the right direction.

First and foremost, it's essential to distinguish trademarks from other forms of intellectual property. For example, trademarks are different from copyrights.

A copyright protects creative works. This could include but is not limited to:

• Books
• Music
• Movies
• Plays
• Sound recordings

You get the picture: it's anything that's an original creation.

And patents, as you likely already know, protect inventions.

On the other hand, trademarks protect either designs, symbols, words, or phrases that act as identifiers for your goods or services. This could be a logo, a company name, or something similar.

A summary: likelihood of confusion factors

Now that you've got a good understanding of trademarks let's jump into a brief overview of the trademark confusion factors:

These factors act as the standard for determining whether there's been trademark infringement of a previously registered mark.

They also form part of the tests the United States Patent and Trademark Office (USPTO) conducts to assess whether a trademark application will be approved.

The name is a dead giveaway: a test used to determine the likelihood of two marks being confused with another.

How trademark infringement damages your brand

Now, I've got to get into why trademark infringement is so damaging to your brand. New business owners may think that it's not that much of a problem.

However, there are often unexpected consequences to not investing in trademark protection; these are as follows:

• Trademark infringement can lead to diminished brand value and reputation due to products with similar packaging or being passed off as your brand's being of lower quality.
• The loss of customers due to cheaper alternatives using your brand's image.
• And ultimately, the loss of revenue for the trademark owner.

As you can see, the way trademark infringement affects your brand — it's almost like a cascading effect.

The key factors that determine the likelihood of confusion

Now, we finally get to the point of this article: What trademark factors determine the likelihood of confusion?

There are several factors that the courts will consider, and these are derived from old trademark law precedence. One of the cases was Polaroid Corp. v. Polarad Elecs. Corp in 1961, and El I. DuPont de Nemours & Co in 1973.

Fun fact: because of these cases, they're often referred to as Polaroid or DuPont factors.

1. The similarity of the two marks

Particularly in the Court, several trademark factors will be considered:

• Appearance
• Verbal translation
• Pronunciation
• And anything else pertinent

The idea behind this factor is simple — should the mark or trade name confuse the public when viewed in isolation, it would be considered too similar.

2. Evidence of actual confusion

Clear evidence of confusion would (of course) make a solid argument for the likelihood of confusion. In the case of the Court of Law, there's a good chance that, in the presence of this alone, the court may declare the already similar marks to be confusingly similar.

3. Strength of the senior trademark

"What on earth is a 'senior trademark'?" You might be wondering.

The senior user's mark is that which has been registered (or, in the case of unregistered marks, used) first. So, if the first registered mark is particularly distinctive, it will likely stay protected.

And this brings up the trademark strength scale. 

Think of it as the weakest types of trademarks being at the bottom of the scale and the strongest, naturally, at the top.

Let's start at the bottom:

Generic trademarks describe the product. There is nothing that distinguishes them. So, for example, if you had a brand called Tires that sold tires, that'd be a generic mark. And, it'd not be eligible for protection.

Next up on the scale are descriptive marks.

These are a little bit better, but still not very strong.

So, for example, if the logo or the company name describes the characteristics or features of the product, it would not be that distinctive.

Consider "hot and spicy" for chilis.

Even higher up the scale, there are suggestive marks. These marks refer to the quality of a product, but it's not so direct as to explain the product right away. Instead, it requires imagination. A famous example of this is Netflix.

Now, the second strongest mark is known as an arbitrary mark. These types of marks are used in common vocabulary. However, they're not related to the product in any way.

Think of "Apple" for computer products.

And finally (I know this has been a particularly long explanation), we have fanciful marks. These can be distinguished because they're not associated with the product and have been created solely to be used as a trademark. A well-known example of this is Kodak for cameras.

4. Intent of the defendant when choosing the mark

If it can be proven that the defendant intentionally chose their mark so that they could capitalize on the brand value of another mark, then this is a clear case of the likelihood of confusion.

5. Likelihood of expansion

Now, if the issue is that a business is planning to expand and end up in competition, the court will always favor the senior trademark. The expansion could be either (a) an increase in the service or product line or (b) a plan to grow to different states or countries.

6. Degree of purchaser care

Depending on the quality standards of the products or services, this may be considered more or less seriously. For example, if the purchaser is buying sophisticated technology, such as a large inverter system, the risk of the buyer confusing the brand they assume to be buying with another is more significant.

The buyer would be considered to exercise greater care in this case.

7. Relatedness of the products

In the case of direct competitors with similar marks, the relatedness, i.e., the chance for connection within the minds of the average reasonably prudent consumer, is high. For entirely unrelated products, there is no likelihood of confusion.

8. Marketing channels employed

This involves many variables, such as the following:

• How the product is marketed
• Its location in the store
• The market that the product advertising is aimed at
• And anything related

This helps the court develop a broader idea of the likelihood of confusion.

How can trademark attorneys help?

Trademark attorneys are a valuable part of the trademark registration process. They're also essential in the case of court issues regarding the likelihood of confusion. While you may think that you can handle the issues yourself, at the end of the day, trademark attorneys have the requisite experience to handle these matters comprehensively and to your benefit.