Likelihood of Confusion—The Basis for Trademark Infringement

A trademark is a word, name, symbol, or other device, or combination thereof that serves to identify the source of goods or services and distinguish them from others. Well-known trademarks include Coca-Cola® for a beverage and Marlboro® for cigarettes. A service mark identifies and serves to distinguish the sources of competing services from each other. Famous service marks are Holiday Inn® for hotel services and McDonald’s® for restaurant services. In this article, for convenience, both trademarks and service marks will be referred to as “trademarks.”

One of the main functions of a trademark is to prevent consumer confusion. For example, a consumer knows that he or she can get the same quality food in a McDonald’s in Pennsylvania as he or she can from a McDonald’s in California. Given our global economy, the importance of trademarks cannot be overstated. The law of trademarks is designed to prevent competitors from confusing customers into thinking that they are buying products and services from a trusted, known source when in reality, this is not the case. A competitor who uses a trademark that is confusingly similar to an existing trademark can be prevented from doing so by the application of trademark law. This usually occurs when the holder of the trademark raises a claim or sues the alleged infringer.

In order to prove trademark infringement, the owner of the trademark must show that there is a “likelihood of confusion” between his or her trademark and the allegedly infringing mark. Over many years and many cases, the courts have set forth a list of eight to 13 elements that are relevant to this determination. This article will discuss the two or three most important of these elements and provide examples of how each element is applied in practice. The most important element of the likelihood of confusion analysis is a comparison of the appearance, pronunciation, meaning, and commercial impression of the respective marks. Obviously, if the marks are exactly the same in spelling and how they are pronounced, there is a greater chance of likelihood of confusion between the marks. It is important to note that slight misspellings or changes in an established mark will not enable a competitor to use his proposed mark. For example, a beverage manufacturer could not adopt the mark “Koka Kola,” because although this mark is spelled differently from the famous Coca-Cola mark, it is still pronounced the same.

This so-called “sight, sound, and meaning” test, while the most important element, is not the only element. Also important is the relatedness of the goods or services. If the goods on which the marks are used are unrelated, the chance of confusion is slight, even if the marks are similar or even exact in sight, sound, and meaning. Examples of this situation are very common. Delta, for instance, is a service mark for airline services, but also functions as a trademark for plumbing fixtures. Two separate companies own those marks. There is no likelihood of confusion between these marks as applied to their respective goods/services because the goods/ services are unrelated. That is, no rational consumer would assume that these goods and services emanate from the same source. It is important to note that no one element of the likelihood of confusion analysis is dispositive in and of itself. Rather, the courts look at all the relevant elements and carefully weigh each one before determining whether a likelihood of confusion exists.

The last element to be discussed in this article is the sophistication of the purchasers of the products/services. Generally, the more sophisticated and knowledgeable the purchasers, the less likely it is that those purchasers will be confused by similar marks. For example, purchasers of jet engines for airplanes will most likely be professional purchasing agents with an intimate knowledge of competing products. Simply put, their purchasing decision is not primarily based on a comparison of the marks, per se, but is based on a deep understanding of the products and their manufacturers. On the other end of the scale, the ordinary, unsophisticated supermarket shopper is likely to be highly influenced by the marks used on products. He or she has neither the time nor the inclination to research competing products. The possibility for confusion of an unsophisticated purchaser is more acute, and thus, a similar mark may create a likelihood of confusion in the mind of an unsophisticated consumer where, in the same case, none would exist in the mind of a sophisticated purchaser.

There are other factors in the analysis, but space limitations prevent them from being discussed in this article. What is important to remember is that no one factor is determinative of likelihood of confusion, but instead, all relevant factors must be considered and weighed before making that determination.

David V. Radack is vice chair of the Intellectual Property Department and a member of Eckert Seamans Cherin & Mellott, LLC in Pittsburgh, Pennsylvania.

For more information, contact A.B. Silverman at Eckert Seamans Cherin & Mellott, LLC, 600 Grant Street, 44th Floor, Pittsburgh, Pennsylvania 15219; (412) 566-6000; fax (412) 566-6099; e-mail abs@escm.com.