The value of a trademark is that others can’t market their products and services using the trademark owner’s brand. This free-riding behavior is legally known as “infringement” of a trademark. The test to determine whether something infringes on a trademark is whether there is a likelihood of confusion between the two marks. When trying to register a mark, the United States Patent and Trademark Office (“USPTO”) will reject an application if there is a likelihood of confusion with an existing mark. In litigation the test is used to determine whether the trademark owner will succeed in their lawsuit.
At a high level, the test is whether consumers would confuse the trademarks and goods offered under them as coming from the same source. The formal test considers thirteen factors original established by the a Federal Court in E.I. DU PONT DE NEMOURS CO. v. CELANESE Corp. Because of this, theses are known as the DuPont factors. No factor is controlling and the analysis should be done on a total view of the impression the marks have on consumers.
While there are thirteen total factors, there are two primary considerations: similarity of marks and similarity of goods or services. Each of these acts on a sliding scale. The more similar the marks are, the greater chance there is a likelihood of confusion. The more similar the goods or services offered under the marks are, the greater change there is a likelihood of confusion. When the marks are similar and the goods or services are similar, consumers are most likely to be confused and infringement has likely occurred.
However, if the goods or services offered by each business using a trademark are not similar, there is no infringement. This is how we get the mark “Dove” for soap and chocolate—no reasonable consumer would believe that a soap maker suddenly decided to become a chocolatier. And obviously, if the marks are not very similar, then there is not likely to be infringement.
Unfortunately, there is a range of overlap in the two factors that can make a legal analysis of potential infringement unclear. The test itself is also highly subjective and depends on the decision-marker applying it. But as a gut check, simply ask yourself: “Would consumers think that Product 1 is offered by the same company that offers trademarked Product 2?” If the answer is no, then there is a lower risk of infringement. If the answer is yes, then there is a high risk of infringement.
The likelihood of confusion analysis is complex and situation-specific. Our trademark attorneys can assist in navigating this complicated legal concept.
