Each of the 13 United States courts of appeals, or circuit courts, has established its own tests for evaluating whether a likelihood of confusion exists between two trademarks. Keegan & Donato Consulting can help you understand the differences.
Keegan & Donato Consulting is a specialty research consultancy and one of the most experienced firms in the field of trademark litigation. We are highly qualified survey experts. Our methodologically sound consumer research studies and expert testimony will meet the courts’ standards for design, execution, and analysis and serve as powerful evidence in your trademark infringement case.
What is Confusion?
Trademark owners who claim infringement and unfair competition under the Lanhan Act, 15 USC 1114(a)(1) are generally required to establish two elements: that the defendant used the registered mark in commerce; and that the use is likely to cause consumer confusion, or to cause mistake, or to deceive.
When marks are too similar, the allegedly infringing mark may confuse consumers into buying unwanted goods or services, dilute or damage a brand’s reputation, or allow competitors to benefit from another brand’s established reputation. The more similar the marks are, the more likely it is that confusion and infringement will occur.
Nationwide Likelihood of Confusion Tests
The Federal Circuit (13th Circuit) utilizes the 13 factors outlined in the case of E.I. du Pont de Nemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973), and this is considered the primary trademark infringement test. In addition, the other circuit courts have laid out their own sets of factors to be deliberated when judging the likelihood of confusion:
1st Circuit: Eight factors set forth in Pignons S.A. de Mecanique de Precision v. Polaroid Corp., 657 F.2d 482, 487 (1st Cir. 1981).
2nd Circuit: Eight factors set forth in Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492, 495 (2d Cir. 1961).
3rd Circuit: Ten factors set forth in Interpace Corp. v. Lapp, Inc., 721 F.2d 460, 463 (3d Cir. 1983).
4th Circuit: Nine factors set forth Pizzeria Uno Corp. v. Temple, 747 F.2d 1522, 1527 (4th Cir. 1984) and Sara Lee Corp v. Kayser-Roth Corp., 81 F.3d 455, 463-64 (4th Cir. 1996).
5th Circuit: Eight factors set forth in Am. Rice Inc. v. Producers Rice Mill, Inc., 518 F.3d 321, 329 (5th Cir. 2008).
6th Circuit: Eight factors set forth in Frisch’s Rest., Inc. v. Shoney’s Inc., , 1264 (6th Cir. 1985).
7th Circuit: Seven factors set forth in Sorensen v. WD-40 Co., 792 F.3d 712, 726 (7th Cir. 2015).
8th Circuit: Six factors set forth in SquirtCo v. Seven-Up Co., 628 F.2d 1086, 1091 (8th Cir. 1980).
9th Circuit: Eight factors set forth in AMF Inc. v. Sleekcraft Boats, , 348-49 (9th Cir.1979).
10th Circuit: Six factors set forth in Sally Beauty Co., Inc. v. Beautyco, Inc., 304 F.3d 964, 972 (10th Cir. 2002).
11th Circuit: Seven factors set forth in Alliance Metals, Inc., of Atlanta v. Hinely Indus., Inc., 222 F.3d 895, 907 (11th Cir. 2000).
12th Circuit (D.C. Circuit): Seven factors set forth in Globalaw Ltd. v. Carmon & Carmon Law Office, 452 F. Supp. 2d 1, 48 (D.D.C. 2006).
Trademark survey companies like Keegan & Donato Consulting can help you understand the differences between likelihood of confusion tests and provide the expertise you need to develop a powerful trademark infringement case strategy. Contact us at (914) 967-9421 to explore our capabilities.
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