Trademark Infringement: Does a “likelihood of confusion” exist?

In order to prevail on a trademark infringement and unfair competition claims, the plaintiff must establish that defendant’s trademark creates a “likelihood of confusion” regarding the origin on the goods or services offered by the plaintiff and the defendant.  

The Likelihood of Confusion Test

There are eight factors that are relevant in determining whether a likelihood of confusion among trademarks exists:

(1) the strength of the plaintiff’s mark,
(2) the relatedness of the goods or services offered by the plaintiff and the defendant,
(3) the similarity of the marks,
(4) any evidence of actual confusion,
(5) the marking channels used by the parties,
(6) the probable degree of purchaser care and sophistication,
(7) the defendant’s intent in selecting its mark, and
(8) the likelihood of either party expanding its product line using the marks.

Not all of these factors will be relevant in every case, and in the course of applying them, the ultimate question remains whether relevant customers are likely to believe that the products of services offered by the parties are affiliated in some way.

(1) The Strength Of The Plaintiff’s Mark

Even where a trademark is incontestable and worthy of full protection, the significance of its presumed strength will depend upon its recognition among members of the public.  Treating a valid, incontestable trademark as an exceptionally strong mark for the purpose of determining whether likelihood of confusion is likely to occur, without examining whether the mark is distinctive and well-known in the general population, would shift the focus away from the key question of whether relevant consumers are likely to believe that the products or services offered by the parties are affiliated in some way.  Although a trademark may be strong and worthy of full protection because it is valid and incontestable, that does not necessarily mean that its strength is particularly relevant to the ultimate issue of whether confusion is likely to occur.

(2) The Relatedness Of The Goods Or Services Offered By The Plaintiff And The Defendant

There are three categories regarding the relatedness of the goods and services with which trademarks are associated.  First, if the parties compete directly by offering their goods or services, confusion is likely is the marks are sufficiently similar.  Second, if the good or services are somewhat related but not competitive, the likelihood of confusion will turn on other factors. Third, if the goods or services are totally unrelated, confusion is unlikely.  

(3) The Similarity Of The Marks

The similarity of the marks factor entails more than a simple side-by-side comparison of the trademarks in question.  Instead, the relevant inquiry is whether a particular trademark, when viewed alone, would lead to uncertainty about the goods or services that it identifies.  Courts must determine whether a given mark would confuse the public when viewed alone, in order to account for the possibility that sufficiently similar marks may confuse customers who do not have both the marks before them but who may have a general, vague, or even hazy, impression or recollection of the other party’s mark.  A court must determine, in the light of what occurs in the marketplace, whether the mark will be confusing to the public when singly presented. As such, a detailed analysis of specific features of a trademark is not appropriate; rather, the court must view marks in their entirety and focus on their overall impressions, not individual features.  

(4) Any Evidence Of Actual Confusion

Evidence of actual confusion is undoubtedly the best evidence of likelihood of confusion.  Where evidence of actual confusion exists, the weight to which such evidence is entitled caries depending upon both the type and amount of confusion that occurs.  If does not follow that any type or quantum of such evidence of actual confusion if entitled to significant weight. The evidence of only a handful of instances of actual confusion after a significant time or a significant degree of concurrent sales under the respective marks may even lead to an inference that no likelihood of confusion exists.  Similarly, confusion that is brief or that occurs among individuals who are not familiar with the products in question is entitled to considerably less weight than are chronic mistakes and serious confusion amount actual customers.

(5) The Marking Channels Used By The Parties

This fifth factor requires an analysis of the parties’ predominant customers and their marketing approaches.  This factor consists of considerations of how and to whom the respective goods or services of the parties are sold.  Where the parties have different customers and market their goods of services in different ways, the likelihood of confusion decreases.  Dissimilarities between the parties’ customers and their methods of marketing their products reduces the likelihood of confusion. This factor becomes particularly important where the other factors are not helpful, because it is very significant in illuminating what actually happens in the marketplace.

(6) The Probable Degree Of Purchaser Care And Sophistication

The owner of a trademark is not entitled to a guarantee against confusion in the minds of careless and indifferent buyers, and merely occasional cases of confusion or thoughtless error by very inattentive purchasers are of very little significance in trademark and unfair competition cases.

(7) The Defendant’s Intent In Selecting Its Mark

If a party chooses a mark with the intention of creating confusion between its products and those of another company, that fact along may be sufficient to justify an inference of confusing similarity.  Circumstantial evidence of copying, particularly the use of a contested mark with knowledge of the protected mark at issue, is sufficient to support an inference of intentional infringement where direct evidence is not available.  Where there is no evidence that the defendant actually knew that a protected trademark existed, such knowledge can be presumed if evidence exists of the plaintiff’s extensive advertising and long-term use of a protected mark.

However, the mere prior existence of a registered mark does not demonstrate that the alleged infringer intentionally copies that mark; otherwise, presumably all trademark infringement cases could result in the finding of intentional copying.

(8) The Likelihood Of Either Party Expanding Its Product Line Using The Marks

Although evidence that either party will likely expand its product lines supports finding a likelihood of confusion between the trademarks, a finding that the parties will not expand their marks significantly does not address the ultimate issue of likelihood of confusion.


As shown above, if a likelihood of confusion exists between your trademark and another’s trademark you may be able to recover.  Alternatively, you may be able to use the same factors to defend your trademark by showing that it does not create a likelihood of confusion.  Regardless, you should consult a qualified attorney to help you navigate the nuances of the likelihood of confusion test.

For more information, or if you need to speak with an attorney regarding a potential lawsuit, please contact us online or call our office for a free consultation, toll free: 1-855-TISH-LAW.

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