IP Tech Knowledgy

The concept of “likelihood of consumer confusion” is the core inquiry underlying most everything about trademark law. It applies when considering what brand to use for a new business, service, or product, or when trying to register a trademark, or when contemplating taking action against a potential infringer.

Always consider whether a consumer could mistakenly believe that a product or service newly offered in the marketplace is actually provided by, connected to, affiliated with, or sponsored or approved by someone who already offers that brand in the same marketplace. If there is a likelihood that consumers would be confused, the first user can usually stop the subsequent user.

The evaluation considers a variety of factors, as noted below. The most obvious and important ones are whether the two entities’ offerings are for the same or similar goods or services using the same or similar marks. Trademark law sets out the following factors that bear on whether a consumer would likely be confused:

• Similarity of the Two Marks: How similar the marks are in their sight, sound, and meaning.
   
• Similarity of Goods and/or Services: Whether the goods and services are the same, similar, related, or complementary.
   
• Sophistication of the Consuming Public: Whether consumers typically exercise care and more thought when purchasing the good/service.  Impulse vs. thoughtful decision-making.
   
• Channels of Trade: Whether the goods and services are sold, marketed, and/or advertised in the same places, to the same general audience, and through the same channels of trade. Would the customers of one ever see the products or services of the other?
   
• Junior User’s Intent: Whether the later users intended to copy the original user, or intended to mislead consumers.
   
• Actual Confusion: Whether consumers have actually been confused by the later user’s use of the mark.
   
• Distinctiveness of the “Senior” Mark: How well-known and distinctive is the earlier-used trademark is among consumers.
   
• Number of Similar Marks: How many other similar marks are already in use on similar goods. Is the marketplace diluted?
   
• Concurrent Use Without Confusion: How long the marks have been used together without any evidence of actual confusion.
   
• Breadth of Usage: The scope of goods or services on which the Senior User uses the mark.
   
• Other Facts: Any other relevant evidence that suggests an effect on consumers. 

Every situation is different, so not every factor is applicable; some may have more weight in certain circumstances. Keep these points in mind when assessing your right to use a trademark or to stop others from using your mark.

Ned T. Himmelrich
410-576-4171 • nhimmelrich@gfrlaw.com