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Telling Likelihood of Confusion in a Tale of Two Circuits

Posted by Thomas P. Howard | May 17, 2021 | 0 Comments

By James Juo.

The legal standard for trademark infringement under the federal Lanham Act is whether there is a likelihood of confusion as to the source of the goods or services with which the trademark is used in commerce. The U.S. Court of Appeals for each regional circuit has its own version of the test for likelihood of confusion for trademark infringement. These tests all consist of a non-exclusive list of factors that are considered under the totality of the circumstances, where the trademarks themselves and the goods or services used with the marks typically are considered to carry the greatest weight. So, New York federal courts apply the Polaroid factors (named after Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492 (2d Cir. 1961)), while a California federal court would apply the Sleekcraft factors (named after AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979)).

This discussion will focus on likelihood-of-confusion factors set forth by the Federal Circuit and then the Tenth Circuit.

Federal Circuit

Although not necessary to establish trademark rights, filing a trademark application with the U.S. Patent and Trademark Office (“USPTO”) can have significant legal benefits and create trademark rights nationwide. The USPTO may refuse to register a trademark application under Section 2(d) of the Lanham Act if the trademark examiner concludes there is a likelihood of confusion with another existing trademark registration. The test applied by the USPTO consists of the thirteen DuPont factors that were listed by the Federal Circuit's predecessor court, the CCPA, which are as follows:

(1) The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression;

(2) The similarity or dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use;

(3) The similarity or dissimilarity of established, likely-to-continue trade channels;

(4) The conditions under which and buyers to whom sales are made;

(5) The fame of the prior mark;

(6) The number and nature of similar marks in use on similar goods;

(7) The nature and extent of any actual confusion;

(8) The length of time during and conditions under which there has been concurrent use without evidence of actual confusion;

(9) The variety of goods on which a mark is or is not used;

(10) The market interface between applicant and the owner of a prior mark;

(11) The extent to which applicant has a right to exclude others from use of its mark on its goods;

(12) The extent of potential confusion; and

(13) Any other established fact probative of the effect of use.

In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973).

While not all of the DuPont factors may be relevant in any given case, any evidence submitted on the record to the USPTO pertaining to any of the DuPont factors must be considered in the likelihood of confusion analysis as part of the examination of a trademark application. In re Guild Mortg. Co., 912 F.3d 1376, 1379 (Fed. Cir. 2019).

Typically, however, the USPTO will focus on two considerations of the likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services. See In re, llc, 866 F.3d 1315, 1322 (Fed. Cir. 2017); Herbko Int'l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65 (Fed. Cir. 2002); Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”).

Trademarks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321 (Fed. Cir. 2014); Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371 (Fed. Cir. 2005).

As for the respective goods or services associated with those marks, they need not be identical or directly competitive to find a likelihood of confusion. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329 (Fed. Cir. 2000). But the goods or services need to be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods or services] emanate from the same source.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369 (Fed. Cir. 2012).

If a trademark examiner makes a Section 2(d) refusal because of a likelihood of confusion, the applicant may request reconsideration by the examiner through submitting arguments and evidence in support of registration. If the examiner is persuaded, then the trademark application may be allowed to proceed to registration. If the refusal is made final, then the applicant may appeal to the Trademark Trial and Appeal Board (“TTAB”), an administrative body of the USPTO. If the TTAB affirms the refusal, then an appeal may be made to the U.S. Court of Appeals for the Federal Circuit.

After a trademark registration is issued, however, the likelihood of confusion analysis will follow the test in the Circuit where the trademark lawsuit is being litigated.

Tenth Circuit

For example, Colorado is in the Tenth Circuit which has listed the following six non-exclusive factors for evaluating likelihood of confusion:

(1) the degree of similarity between the marks;

(2) the intent of the alleged infringer in using the mark;

(3) evidence of actual confusion;

(4) similarity of products and manner of marketing;

(5) the degree of care likely to be exercised by purchasers; and

(6) the strength or weakness of the mark.

King of the Mountain Sports, Inc. v. Chrysler Corp., 185 F.3d 1084 (10th Cir. 1999); Sally Beauty Co., Inc. v. Beautyco, Inc., 304 F.3d 964 (10th Cir. 2002); Water Pik, Inc. v. Med-Sys., Inc., 726 F.3d 1136 (10th Cir. 2013).

The Tenth Circuit recognizes that similarity of the marks is “the first and most important factor,” but also says that “actual confusion in the marketplace is often considered the best evidence of likelihood of confusion.” King of the Mountain Sports, 185 F.3d at 1091 &1092 (internal quotation marks omitted); see also Water Pik, 726 F.3d at 1144 (“such empirical data can be a reality check on the more theoretical analysis under the other factors”). The absence of actual confusion, however, does not necessarily support a finding of no likelihood of confusion. Sally Beauty, 304 F.3d at 974; Beer Nuts, Inc. v. Clover Club Foods Co., 805 F.2d 920, 928 (10th Cir. 1986) (holding that the absence of evidence of actual confusion did not preclude a likelihood of confusion “where the products are inexpensive and virtually identical” because purchasers are unlikely to bother informing the trademark owner about actual confusion over an inexpensive product).

A court also might find the evidence of “isolated” instances of actual confusion to be de minimis which “does not support a finding of a genuine issue of material fact as to the likelihood of confusion.” King of the Mountain Sports, 185 F.3d at 1092 (finding that “seven examples of actual confusion” constituted only a “handful of anecdotal evidence” and was “de minimis”); Water Pik, 726 F.3d at 1150 (“isolated, anecdotal instances of actual confusion may be de minimis and may be disregarded in the confusion analysis”); Universal Money Centers, Inc. v. AT&T Co., 22 F.3d 1527, 1535 (10th Cir. 1994) (“de minimis evidence of actual confusion is especially undermined in this case by the sheer lack of similarity between the marks”).

“Evidence of actual confusion is often introduced through the use of surveys, although their evidentiary value depends on the methodology and questions asked.” Water Pik, 726 F.3d at 1144 (quoting Vail Assocs., Inc. v. Vend–Tel–Co., Ltd., 516 F.3d 853, 863 (10th Cir. 2008)). A poorly constructed survey may be disregarded by the court. Water Pik, 726 F.3d at 1144–50.

The trademark attorneys at Thomas P. Howard, LLC are experienced in evaluating likelihood of confusion both in the prosecution of trademark applications before the USPTO, as well as in enforcing trademarks or defending against infringement claims in litigation nationwide including in Colorado.

About the Author

Thomas P. Howard

Thomas Howard is an experienced trial lawyer that handles intellectual property litigation nationwide, including copyright, trademark, trade secret and patent litigation, as well as complex civil litigation, including breach of contract, interference with contract, breach of fiduciary duty, conspiracy, fraud and fraudulent transfer of assets.


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