Joshua Julien Brouard
05 September 2023 • 6 min read
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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.
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:
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.
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.
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:
As you can see, the way trademark infringement affects your brand — it's almost like a cascading effect.
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.
Particularly in the Court, several trademark factors will be considered:
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.
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.
"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.
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.
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.
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.
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.
This involves many variables, such as the following:
This helps the court develop a broader idea of the likelihood of confusion.
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.
This test determines whether actual confusion exists, particularly in cases where the marks used are for similar goods and services. And where there's a good chance of consumer confusion.
While there are trademark confusion factors, the most significant is the similarity of the marks. If the marks are similar in appearance or commercial impression, there's a high likelihood of confusion.
Consider a local mechanic that calls itself Wisconsin Auto. It's been in operation for decades. A few months ago, a new mechanic opened under the name Wisconsin Mechanic. In this case, there's a good chance of trademark confusion because the names are similar and relate to the same service.
The strength of the mark refers to the “scale of strength”. In it, the weakest are considered generic or descriptive marks, marks of either everyday words associated with the products or clear descriptions of the product. Then there are suggestive marks, which are a bit stronger and suggest a product quality without saying it outright.
Finally, there are arbitrary or fanciful marks; these are either marks that have nothing to do with the product or are made up to distinguish it.
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Joshua Julien Brouard
Joshua J. Brouard brings a rich and varied background to his writing endeavors. With a bachelor of commerce degree and a major in law, he possesses an affinity for tackling business-related challenges. His first writing position at a startup proved instrumental in cultivating his robust business acumen, given his integral role in steering the company's expansion. Complementing this is his extensive track record of producing content across diverse domains for various digital marketing agencies.
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