There is a compelling reason why companies seek to protect their brands with trademark registrations - revenue. It takes significant investment in terms of resources to build a successful brand. Leveraging a return on that investment becomes critical.
Registration protects the right of those who brought the brand to life to see the fruits of their labour rather than potentially infringing parties. There is always room for error particularly amongst younger companies who may not be au fait with trademark law or indeed proper clearance processes as well as those of more nefarious intent. Intentionally or not, similar brands come on the market every day.
So how can you avoid unintentionally infringing on a trademark belonging to someone else? You can start by understanding more about how infringement works!
7 Factors For Identifying Trademark Likelihood of Confusion
This is where the rules of trademark likelihood of confusion come in. Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d) states:
No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it . . . (d) Consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive. .
‘Likelihood of confusion’ is the gold standard by which infringement is measured across almost every region although, of course, specific phraseology may vary. Many regions, including the US, have different ‘tests’ that they apply to assess likelihood of confusion with set factors to measure.
These factors can vary on the basis on the set of facts applicable to the case at hand and so advice is recommended as to the factors applicable to your region and circumstances. Nonetheless, some general principles apply:
Why Identifying Trademark Confusion Matters
Making sure you are fully aware of what constitutes likelihood of confusion is just as important for your initial naming process as it is for any trademark watching you have in place. Obviously, you do not want to submit a trademark application that will be rejected. At the same time, making sure no one is infringing on your valuable assets is important.
It is important to understand that protecting trademarks is not so much about the marks themselves but about what they represent and portray. If you get a burger in a box looking a lot like the ones Big Mac’s come in you would expect certain flavors and textures. But, if the burger is not a genuine article your perception of Big Mac’s, and McDonald’s, can be greatly diminished.
Protecting Profits & Brand Integrity
There are almost countless ways you can lose money when your trademarks are being infringed upon, but these are the two most common and serious:
Losing direct sales
Brand reputation gets damaged.
But let’s get to it and take a look at the seven factors influencing trademark likelihood of confusion as outlined by the USPTO in their Trademark Manual of Examining Procedure:
The 7 Factors for Identifying Trademark Likelihood of Confusion:
1. Relatedness of Goods or Services
Would an everyday consumer paying an average amount of attention (which varies amongst product groups and prices) be likely to purchase one product or service, in the belief that it is in fact a different one?
The connection between the similarity of the two brand names and the relative closeness of the goods or services is an important one. The further apart the goods and services are, the less likely overlap there might be between the two markets. Computer software and computer peripherals, for example, are likely to attract similar customers and so the risk of confusion is higher. The brand names in this case would be required to be more distinct from each other.
In the event that the two competing products are tractor parts and bikinis, it is possible that even an identical brand name could be acceptable as it seems unlikely that their markets would be substantially made up of similar consumers. Where there is any overlap between those consumers groups, it is less likely that an individual consumer would naturally think that a tractor parts manufacturer had branched out into swimwear and vice versa.
2. Similarity of Marks
The judgement in terms of the similarity of two marks is an entirely subjective one. The factors which must be considered, amongst others, are visual and phonetic similarity (looks like, sounds like), word meanings, translations and marketplace considerations.
Which begs the question: How similar is too similar?
Only the courts can answer that. It would appear that just adding a prefix, changing some letters or adding more information is not always enough to avoid likelihood of confusion.
Marks Found to Be Too Similar:
Magnavox vs. Multivox
Simoniz vs. Permanize
Platinum Puff vs. Platinum Plus
Zirco vs. Cozirc
Maternally Yours vs. Your Maternity Shop
As you can see, the above examples are by no means identical. Nevertheless, they were found too confusing for an average consumer. I am sure you could also confuse some brands you are only mildly familiar with, right?
3. Similarity In Appearance
Marks can also be too similar and confusing when it comes to their appearance and design.
In 2006, Audio BSS USA was found to be too similar in appearance to Boss Audio Systems.
In re Lamson Oil Co., 6 USPQ2d 1041 (TTAB 1987), TRUCOOL and TURCOOL were found confusingly similar in appearance.
In re Pix of Am., Inc., 225 USPQ 691 (TTAB 1985) ( NEWPORTS and NEWPORT were found to be essentially identical in appearance)
In re Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983) (MILTRON and MILLTRONICS (stylized) found to be highly similar in appearance)
In re BASF A.G., 189 USPQ 424 (TTAB 1975) (LUTEX and LUTEXAL difference insufficient to avoid source confusion)
4. Similarity In Sound
Similarity in sounds refers to the phonetic match between marks. But how do you pronounce a particular brand correctly? No way to know for sure but here’s a good rule of thumb: if there is any way that two or more marks can possibly be phonetically similar, likelihood of confusion may exist.
The courts found the following marks too similar in sound:
SEYCOS vs. SEIKO
CRESCO vs. KRESSCO
ENTELEC vs. INTELECT
Naturally, phonetic similarity was not the only deciding factor in the above examples. Their respective goods and services descriptions and other factors also played a significant role.
5. Similarity In Meaning
Among the important factors influencing likelihood of confusion is the marks’ meaning in relation to the goods and services description. Being identical in sound and appearance might still be completely different in their commercial impression.
For example: CROSS-OVER vs. CROSSOVER
CROSS-OVER is related to the material construction of a bra. While the second one, CROSSOVER, is more perceived as a cross-over between formal and active sportswear.
Conversely, here are some marks the courts found to be too similar in meaning:
MR. CLEAN vs. MR. RUST
THIRTY FORTY FIFTY vs. 60 40 20
PLEDGE vs. PROMISE
6. Design Marks
The likelihood of confusion between design marks is determined based on the similarity of their visual presentation. No one usually views marks side-by-side and the recollection of marks is very general. Therefore, visually similar marks can be confusing even if they constitute completely different goods and services.
As an example, Ocean Spray Cranberries, INC. v. Ocean Garden Prods, the trademarks were ruled as not to cause confusion. The marks consisted of a circle with three curved lines featuring rounded ends, and a stylized breaking wave inside an oval, respectively.
7. Likely to Deceive
Can’t get any easier than this - deception is quite obviously a bad thing. However, deception would involve intent which can be extremely difficult to prove in practice.
In conclusion, even advertising and distribution channels are taken into account in the court's’ decision. The reason for this is rather simple, to figure out whether consumers are exposed to the potential confusion. Just as simple as that.