Trademarks: Likelihood of Confusion Test

Last week, I discussed trademark registration and characteristics of strong trademarks. Today, I’ll go over the likelihood of confusion test and why it’s important for registration applications and for infringement. 

"Likelihood of Confusion" Defined

The USPTO applies a “likelihood of confusion” test when examining trademark applications; similarly, the courts apply the same test when examining trademark infringement lawsuits. The test is used to decide if a trademark is likely to be confused with another trademark. Likelihood of confusion is a common reason the USPTO refuses a trademark application and is the legal standard a court uses to determine trademark infringement.

Likelihood of Confusion Test:  Factors Considered

The likelihood of confusion test looks at 8 factors together, and are often called the Polaroid factors after a case involving Polaroid Corp. and another company, Polarad, in the 1960s. These factors are: 

• Strength of the mark registered or used first. The more distinctive the mark, the more protected it is. Distinctiveness is measured by determining whether the mark is generic, descriptive, suggestive, arbitrary, or fanciful. 
• Relatedness of the products. The USPTO and courts look at whether the 2 products in question have the potential to be connected in the minds of customers. If the products compete directly, it’s more likely customers will be confused. 
• Similarity of the marks. The USPTO and courts look at how similar the marks are in pronunciation, appearance, meaning, and verbal translation, by viewing each mark in its entirety. 
• Evidence of actual confusion, or a showing that the average reasonably prudent consumer is confused. Actual evidence isn’t always possible, so showing that a reasonably prudent consumer would be confused may be sufficient.
• The intent in adopting the more recent mark. If the more recent trademark was adopted knowing that consumers may confuse their trademark with another business, that weighs for a finding of likelihood of confusion. 
• Sophistication of the consumers. The less sophisticated the consumers, the more likely the confusion. And, the more expensive the purchase, the more discriminating the consumer tends to be. An ordinary purchaser who buys inexpensive items or on impulse is most likely to be confused with similar marks, so less similarity may be needed to show a likelihood of confusion here.
• Likelihood the earlier trademark user will expand into the other business’s product area. There’s likely to be more confusion if the earlier trademark user will expand into the newer mark’s business area.
• Quality of the newer mark’s products or services. In some cases, the lesser the quality of the newer mark’s product, the more harm is likely to result from consumer confusion.

Not every factor is relevant in each case, and the courts and USPTO will only consider the relevant factors for each case or application. Before applying for registration, it’s always best to work with a trademark attorney who will conduct a comprehensive search and determine whether your proposed mark is likely to pass the likelihood of confusion test.

‍