In trademark infringement cases, plaintiffs must prove that the defendant’s use of a registered mark will likely cause consumer confusion or deceive. Read more about proving consumer confusion from the experts at Keegan & Donato Consulting.
Keegan & Donato Consulting designs and executes consumer survey research studies and collaborates on a wide range of marketing and complex commercial litigation issues. We offer a combined 25+ years of experience in conducting consumer research studies in the context of intellectual property disputes and provide services across the nation.
How to Demonstrate Confusion
One of the foremost purposes of a trademark is to prevent consumer confusion. When marks are too similar, they may confuse consumers into purchasing unwanted brands, may dilute or damage a brand’s reputation, or may allow a competing brand to benefit from the established reputation of another brand.
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.
The courts may apply different factors in order to assess the likelihood of confusion, such as:
- Strength of the senior mark: The senior trademark is the one that was used or registered first. The more distinctive the mark, the more protected it is.
- Relatedness of the goods or services: This refers to how likely it is that an average consumer would purchase one product or service in the belief that it is a different product or service.
- Similarity of the parties’ marks: One of the most important factors, the elements to be considered involve similarity in appearance, sound, and meaning.
- Competition in the marketplace: The similarity of marks is also assessed based on how consumers encounter them in the marketplace, such as how they are advertised and where in a store they might be found.
- Defendant’s intent: Evidence that the infringing party intentionally chose their mark to cause confusion may be enough to prove the likelihood of confusion.
- Buyer sophistication: This refers to the amount of care taken by the consumer during the purchasing process. The less sophisticated the purchaser, the more likely the confusion.
- Evidence of actual confusion: Evidence of actual confusion is proof that the products and marks are similar enough to create confusion among consumers.
Is a Survey Necessary?
A well-designed survey can provide direct scientific evidence of the extent to which consumers believe there is a relationship between the plaintiff’s and the defendant’s mark, brand, or product. Courts often give such evidence substantial weight, as illustrated by the following example.
In Tiffany and Co. v. Costco Wholesale Corp., 127 F.Supp.3d 250 –District Court, S.D. New York (2015), the iconic jeweler sued Costco for trademark infringement over its use of the “Tiffany” trademark to sell diamond wedding rings.
The defendant argued that using the name Tiffany merely to describe the style of the ring (i.e., “Tiffany” setting) did not confuse consumers into thinking that Tiffany & Co. was the source of the ring.
Tiffany & Co. proffered a consumer confusion survey which determined that prospective purchasers of wedding rings at Costco were likely confused into believing that Tiffany & Co. was the source of the rings.
Costco attacked the survey expert’s methods but did not offer its own survey or any other evidence of lack of consumer confusion. Without a competing survey, “Tiffany’s evidence of consumer confusion stands unrebutted.” The Court granted Tiffany’s motion for summary judgment.
Proving consumer confusion in trademark infringement cases is easier with the expertise of Keegan & Donato Consulting. Hiring us will have a significant impact on whether the court deems your survey results admissible. Call us at (914) 967-9421 to take advantage of our training, expertise, and data-gathering expertise.