Likelihood of
Confusion

Featured Case Study: Trademark Survey Evidence in IYO v. OpenAI

Trademark survey evidence can play an important role in likelihood of confusion disputes, especially at the preliminary injunction stage. In IYO, Inc. v. IO Products, Inc., OpenAI, Inc., OpenAI LLC, Sam Altman, and Jonathan Paul Ive, the court granted IYO’s motion for a preliminary injunction after considering consumer survey evidence submitted by Mark Keegan. (read more)

Publishing Industry

Our client, the Plaintiff, alleged that the use of Defendants’ brand in connection with books infringed upon their registered trademarks used on a line of competing products.  Our client was concerned with the potential for consumer confusion between the Defendants’ series and their series based on the similarities of the marks and the overlap between the Parties’ markets and consumers. For many years, our client marketed and sold its books directly to consumers and in the educational market and had garnered recognition and accolades nationwide. Our client’s concerns regarding consumer confusion arose from the fact that the same consumers who have come to recognize and value their brand would be exposed to the Defendant’s infringing use at retail booksellers that market and sell competing products. Thus, the Parties’ brands not only sell the same types of products and services, but also occupy the same adjacent mind space among relevant consumers, thereby creating marketplace proximity. 

Commensurate with the Defendants’ alleged infringement of the trademarks, the Plaintiff alleged that the similarities between the Defendants’ products and the Plaintiff’s products had the potential to create a false impression that Defendants’ Infringing Products originated from them, to deceive customers, or to cause confusion as to the origin or affiliation of Defendants with their goods and services, and that the fact that both the Plaintiff’s goods and services and the Defendants’ Infringing Products are targeted to the same audience, adds to this likelihood of confusion. Our client further alleged that the Defendants’ use of the mark at issue was likely to create the false impression and lead others to mistakenly believe that Defendants’ business and the products it offered in connection with the mark originate from or are in some way associated with, sponsored, authorized or endorsed by, or related to the Plaintiff. 

Keegan & Donato designed and executed a study to determine the extent to which, if at all, there was a likelihood of confusion among relevant consumers between the Defendant and the Plaintiff based on the Defendants’ alleged infringement of our client’s trademarks. This national study consisted of hundreds of likely purchasers of the Parties’ products.

The study conducted in this case weighed in favor of and supported the finding that there is a material likelihood of confusion among relevant consumers between the Defendants and the Plaintiff based on the similarity of the Defendant’s products to the Plaintiff’s products. 

Specifically, a majority of respondents indicated a belief that the Defendant’s products and the Plaintiff’s Club products were put out by the same company; that the Defendant’s products were affiliated, connected, or associated with the Plaintiff; or that the Defendant’s products were sponsored or approved by the Plaintiff. Accounting for the study’s external control yielded material net confusion among relevant consumers. The study findings exceeded the threshold that is typically viewed as evidence of a likelihood of confusion among relevant consumers. 

Because this study employed appropriate and rigorous controls which account for extraneous variables, the observed consumer confusion between the Parties’ products was directly attributable to the contested trademark issues concerning likelihood of confusion and infringement being litigated in the case.

Toy Industry

The Plaintiffs alleged that our client’s marks, the Defendants, were confusingly similar to their mark since the Defendants’ marks consisted of and/or included the same or similar terms, some of which were alleged to be the phonetic equivalent of the Plaintiffs’ mark. The Plaintiffs alleged that the Defendants’ use of their marks caused a likelihood of confusion, deception and mistake by the consuming public and the trade and that consumers were likely to mistakenly believe that Defendants’ business and goods are associated with or sponsored and approved by Plaintiffs.

Keegan & Donato developed and fielded a consumer survey addressing the Plaintiffs’ allegations of a likelihood of consumer confusion. The study sought to determine the extent to which, if at all, there was a likelihood of confusion among relevant consumers between the Defendants’ and the Plaintiffs’ marks. This national study consisted of several hundred likely purchasers of the Parties’ relevant products.

The study findings weighed in favor of the finding that there is no material likelihood of confusion among relevant consumers between the Defendants’ and the Plaintiffs’ marks. The net difference between the overall level of likelihood of confusion measured for the marks of interest and that which was measured for the study’s external control did not support a finding of consumer confusion. Additionally, there was an insufficient net difference between the overall level of likelihood of confusion measured for the marks of interest and the average of the overall likelihood of confusion measured across the study’s internal controls to support a likelihood of confusion finding.

For this study, whether considering the study’s external control or internal controls, the study findings fell well below the minimum threshold that is typically viewed as evidence of a likelihood of confusion among relevant consumers.

Through use of appropriate and rigorous controls, the issue of whether there is consumer confusion based solely on the contested trademark allegations was isolated. Accordingly, the study accounted for extraneous variables and demonstrated that there was no likelihood of confusion based on the allegations.

Construction Industry

Our client alleged that the Defendant infringed their trade dress on a novel construction product. The Plaintiff alleged that the Defendant’s use of confusingly similar imitations of their trade dress is likely to cause confusion, deception, and mistake by creating the false and misleading impression that Defendant’s goods are produced or distributed by the Plaintiff, or are affiliated, connected, or associated with the Plaintiff, or have the sponsorship, endorsement, or approval of the Plaintiff.  

Keegan & Donato designed and executed a study to determine the extent to which, if at all, there was a likelihood of confusion among relevant consumers between the Defendant and the Plaintiff based on the Defendant’s alleged infringement of the contested trade dress. This study consisted of over one thousand respondents within the Defendant’s urban market area.

The study conducted in this case weighed in favor of the finding that there was a material likelihood of confusion among relevant consumers between the Defendant and the Plaintiff based on the similarity of the Parties’ trade dress.

A majority of respondents who viewed the Plaintiff’s and Defendant’s use of the trade dress indicated a belief that the competing products were put out by the same company; that the Defendant is affiliated, connected, or associated with the Plaintiff; or that the Defendant is sponsored or approved by the plaintiff. Accounting for the study’s external control yielded a material level of net confusion among relevant consumers. This study was replicated for an alternate version of the trade dress which was also alleged to be infringing. The results of that study were similar, and the same conclusion was reached.

The study revealed that for both types of allegedly infringing trade dress, the study findings of consumer confusion exceeded the minimum threshold that is typically viewed as evidence of a likelihood of confusion among relevant consumers.

Because this study employed appropriate and rigorous controls which accounted for extraneous variables, the observed net confusion between the Parties’ products was directly attributable to the contested trade dress issues that were litigated in that matter.

We address the likelihood of confusion using both classic and customized survey designs. Our surveys are tailored for federal and state courts, the TTAB, arbitration, and other specialty venues.