Analyzing the Likelihood of Confusion in Trademark Infringement Cases

Many people believe that once a saying, a logo, or a slogan is trademarked, it can’t be used by anybody else, in any capacity.  But that’s not true, because trademarks have to do with the public’s association with a mark, with your business or brand. And it can and does happen that two businesses use the same name or mark, because the products are so different that there can be no customer confusion.

Consumer Confusion

As a general rule, you can use a trademarked slogan, logo, or saying, if there is no likelihood of customer confusion.

If I open a computer store and call it “Apple Computer Repair,” there is a strong likelihood that the public might feel it is associated with the same Apple that makes iPhones and Mac computers. But if I open a nail salon called “Tesla Nails,” it is unlikely anybody would think my nail salon has anything to do with the electric car manufacturer Tesla.

What is Similar?

But that begs the question, how similar is too similar? That is, when are two products or services so far apart that they can’t reasonably be said to be likely to confuse the general public?

If I sell computers, yes, the public can tell that my computers are not MacBooks, and thus, it would seem that I could call my computers “Apple,” or “Macintosh” without confusion. But that simply isn’t true.

The question is not whether or not a consumer could differentiate a product as being from one manufacturer or the other–the question is whether or not the public believes that the specific product comes from a single, specific source.

In our example, people know Apple sells computers, so if they know that, you cannot also sell computers under the Apple or Macbook trademarked name, even if they would know that your specific computer is not a MacBook or iMac.

Other Confusion Factors

There are actually a lot of factors that go into determining whether there is a likelihood of confusion. They include:

Actual confusion–that is, have consumers in the past confused one product as being from another manufacturer, or whether consumers have actually been confused about the source of the product they are buying, because of the misuse of the trademarked logo, slogan or name.

Strength of the mark– this has to do with how distinctive the trademark is. The more unique the trademark, the stronger it will be, and the less likelihood of confusion there is.

Similarity – Two trademarks don’t have to be identical, to constitute infringement, so the court will look to how similar the competing trademarks actually are. The court will also look to how similar the products or services themselves are, as well as how similar the advertising is, for both parties.

Consumers – In industries with more sophisticated consumers, the likelihood of confusion is less than in other industries. Complex areas or industries, which lay people don’t know much about, are less likely to result in confusion.

Call our West Palm Beach commercial litigation attorneys at Pike & Lustig for help.

Source:

ipupdate.com/2023/01/i-know-that-brand-or-do-i-reviewing-the-eleventh-circuits-likelihood-of-confusion-analysis/