Likelihood of Confusion in Trademark Law

Trademark law is a complicated field with a variety doctrines and nuances, but the core goal of the law is to prevent consumers from being confused about what company is offering a product or service. That means that in order for a plaintiff to prevail on a trademark infringement claim, they need to show that there is a likelihood that consumers will confuse the two companies’ marks. Of course, that simple-sounding phrase actually hides some complexity of its own. The 11^th Circuit, the federal judicial district covering Florida, looks at seven factors to determine whether there is a likelihood that consumers will confuse the products.

Factors in Likelihood of Confusion

The 11^th Circuit factors for determining likelihood of confusion are laid out in the case Lone Star Steakhouse Saloon Inc, v. Longhorn Steaks Inc.The seven factors are:

• the type of mark,
• the similarity of the marks,
• the similarity of the products that the marks represent,
• the similarity of the parties retail outlets and customers,
• the similarity of the advertising media used,
• the defendant’s intent, and
• actual confusion.

There are some important things to understand about these seven factors. First, they form a balancing test rather than a checklist. A plaintiff does not necessarily need to prove that the defendant intended to cause consumer confusion if they can show some of the other factors strongly enough. Additionally, not all of the factors are necessarily going to be weighted the same. For instance, courts tend to care a good deal about evidence of actual confusion, while the similarity of the advertising media, while still important, is less so. Another important thing to understand is the type of evidence that the courts will look at in order to determine whether there is a likelihood of confusion.

Proving Likelihood of Confusion

There is a variety of different evidence that the courts may use to rule on the issue of consumer confusion. Two of the most powerful pieces are the marks themselves and consumer surveys.

Courts will often look at the marks themselves and compare them side by side when making a decision. As far as the above factors go, this analysis will relate to the similarity of the marks, but it can also have a powerful impact on a more intuitive level. Judges are people. They are trained to be impartial and analytical, but they can still be swayed by first impressions about how similar the marks look to them. There are even instances of judges ignoring survey evidence based on how clearly dissimilar they thought the marks were.

However, in most cases, survey evidence can be some of the strongest evidence the parties can bring. Specialized survey firms can conduct research into how people react to the marks and whether there is actual confusion at the consumer level. Although there is always room to attack the methodology of the opposing party’s survey, this evidence of actual confusion or lack thereof can be some of the most persuasive evidence a judge sees.

A company’s brand is the face that it has for its customers, and that is an important asset to protect. If your company is involved in a trademark dispute, contact a Florida trademark attorney at Pike & Lustig, LLP today.