How is likelihood of confusion determined?
When a determination is being made as to whether there is a likelihood of confusion, it should not be assumed that the two marks at issue will be seen together (side-by-side) by the consumers. Rather, the focus is on the impression each mark leaves on the consumers’ minds. In making this determination, there are a variety of factors which have been set forth as relevant (while other factors may be relevant in a specific case, these are the most common):
1. The strength of the prior trademark. The stronger the prior trademark, the more likely it is that consumers will be confused by the newer trademark (the trademark being challenged).
2. The similarity of the relevant goods and services for each mark. This looks at things such as whether each party’s goods or services are likely to be sold in the same stores and/or in the same area of stores.
3. The similarity of the marks. This looks at how much the marks sound like each other when spoken, how similar the marks are in their appearance and how similar the overall meaning of each mark is (the mental image invoked by the marks).
4. Any actual confusion between the marks. Evidence of actual confusion can come from one party receiving mail, phone calls, etc. which were intended for the other party. Such evidence of actual confusion is very persuasive, though not necessarily determinative, since it is not hard to imagine that there will be a likelihood of confusion if there has already been some actual confusion.
5. Consumer surveys. Many times, the parties will conduct surveys using the two marks at issue, to see if an appreciable percentage of the public would actually be confused by the marks. This is often one of the most persuasive forms of evidence used in addressing whether or not there is a likelihood of confusion.
6. The level of care which the consumers of the relevant goods and services are likely to exercise. If the relevant consumers are likely to exercise a high degree of care, it is harder to establish likelihood of confusion since the consumers are more discerning.
7. The intent of the person who picked the trademark being challenged. If the party who picked the challenged trademark chose it specifically to cause confusion with the other mark, or to “cash in” on the other party’s goodwill, there will be a strong presumption of a likelihood of confusion.
8. The likelihood that the owner of the prior trademark will expand his line of his goods or services into the area covered by the other party’s goods and services. If the prior trademark owner does not currently use his trademark on the same goods and services as the other mark is used, but it is likely that his use could expand to these goods and services, this would contribute to a likelihood of confusion.
None of these factors are determinative on their own, but together they allow for a decision to made as to whether there is a likelihood of confusion.