Each of the 13 federal courts of appeal have their own test for evaluating whether a likelihood of confusion exists between two trademarks. Although the tests are not identical, most of them are substantially similar and use many of the same factors. And the factors are non-exclusive.
Generally, nine factors are considered in likelihood of confusion analysis for non-competitive goods (1938 Restatement of Torts § 731).
- The likelihood that the actor’s goods, services or business will be mistaken for those of the other
- The likelihood that the other may expand his business so as to compete with the actor
- The extent to which the goods or services of the actor and those of the other have common purchasers or users
- The extent to which the goods or services of the actor and those of the other are marketed through the same channels
- The relation between the functions of the goods or services of the actor and those of the other
- The degree of distinctiveness of the trademark or trade name
- The degree of attention usually given to trade symbols in the purchase of goods or services of the actor and those of the other
- The length of time during which the actor has used the designation
- The intent of the actor in adopting and using the designation
The test, however, depends on jurisdiction. Some common factors include:
- Strength of plaintiff’s mark: Arbitrary, suggestive, descriptive
- Similarity of marks: Sound, appearance and connotation
- Similarity of goods or services
- Defendant’s intent
- Actual confusion
- Sophistication of buyers or care exhibited by purchasers
Not all Factors are evenly weighted. They are fact dependent and subjectively tested on a case-by-case basis.
10th Circuit: six factors
The 10th Circuit includes:
- District of Colorado
- District of Kansas
- District of New Mexico
- Eastern District of Oklahoma
- Northern District of Oklahoma
- Western District of Oklahoma
- District of Utah
- District of Wyoming
The Tenth Circuit uses the following six factors:
- The degree of similarity between the marks
- The intent of the alleged infringer in using the mark
- Evidence of actual confusion
- Similarity of products and manner of marketing
- The degree of care likely to be exercised by purchasers
- The strength or weakness of the mark
Sally Beauty Co., Inc. v. Beautyco, Inc., 304 F.3d 964, 972 (10th Cir. 2002) (citing King of the Mountain Sports, Inc. v. Chrysler Corp., 185 F.3d 1084, 1089-90 (10th Cir. 1999)).
About Rhonda Harper LLC – Expert Witness
Located in Dallas, TX, Rhonda Harper has been retained by 95 law firms since 2013. With a focus on Trademark Infringement and Deceptive Advertising cases, Harper has conducted 50+ Likelihood of Confusion and Secondary Meaning surveys. She has been deposed ~50 times and served in ~20+ trials and arbitrations.