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Likelihood of Confusion analysis under the Lanham Act

Posted in Trademark Law

By: David Muradyan

The Ninth Circuit, like many of its sister circuits, uses the “likelihood of confusion” analysis to determine whether one mark infringes upon another mark.

For background, the Lanham Trademark Act of 1946 (“Lanham Act”), 15 U.S.C. §§ 1051, 1127, defines a trademark to mean “any word, name, symbol, or device or any combination thereof” used by any person “to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.”  Under 15 U.S.C. § 1114(1), the holder of a registered trademark can file a trademark infringement claim against any person who, without the registered trademark holder’s consent, (1) uses any reproduction, counterfeit, copy, or colorable imitation of a registered mark; (2) in commerce; (3) in connection with the sale, offering for sale, distribution, or advertising of any goods or services; (4) where such use is likely to cause confusion, or to cause mistake, or to deceive. Century 21 Real Estate Corp. v. Sandlin, 846 F.2d 1175, 1178 (9th Cir. 1988); see also 15 U.S.C. § 1125(a) (“Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which . . .  is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person . . . shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.”). 

 

To prevail on a claim of trademark infringement under § 1114, a party must prove: (1) that is has a protectable ownership interest in the mark; and (2) that the defendant’s use of the mark is likely to cause consumer confusion. Dep’t of Parks & Recreation v. Bazaar Del Mundo Inc., 448 F.3d 1118, 1124 (9th Cir. 2006). A plaintiff must have a “valid, protectable trademark” before claiming trademark infringement. Zobmondo Entertainment, LLC v. Falls Media, LLC, 602 F.3d 1108, 1113 (9th Cir. 2010). For a trademark to be “valid and protectable,” it must be “distinctive.” Id.  A trademark’s distinctiveness measures its primary significance to the purchasing public. Quicksilver, Inc. v. Kymsta Corp., 466 F.3d 749, 760 (9th Cir.2006) (quotation marks omitted).

Marks are generally classified in categories of increasing distinctiveness, including (1) generic; (2) descriptive; (3) suggestive; (4) arbitrary; or (5) fanciful. Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768 (1992). “The more likely a mark is to be remembered and associated in the public mind with the mark’s owner, the greater protection the mark is accorded by trademark laws." GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 1199, 1207 (9th Cir. 2000). As the Ninth Circuit has explained: “A mark’s conceptual strength depends largely on the obviousness of its connection to the good or service to which it refers. The less obvious the connection, the stronger the mark, and vice versa. . . . At one end of the spectrum, generic marks refer to the genus of which the particular product is a species, such as ‘bread’ or ‘door,’ and are not registerable as trademarks. At the other end of the spectrum are arbitrary marks—actual words with no connection to the product—such as Apple computers and Camel cigarettes, and fanciful marks—made-up words with no discernable meaning—such as Kodak film and Sony electronics that are inherently distinctive and therefore receive maximum trademark protection.  In the middle are descriptive marks, which describe the qualities or characteristics of a good or service and only receive protection if they acquire secondary meaning, and suggestive marks, which require a consumer to use imagination or any type of multistage reasoning to understand the mark’s significance and automatically receive protection.” Fortune Dynamic, Inc. v. Victoria’s Secret Stores Brand Management, Inc., 618 F.3d 1025, 1032-33 (9th Cir. 2010) (citations, quotation marks and formatting omitted).

Although the plaintiff in a trademark action bears the ultimate burden of proof that his or her mark is valid, federal registration provides “prima facie evidence of the validity of the registered mark and of the registration of the mark, of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the registered mark in commerce on or in connection with the goods or services specified in the registration,” and entitles the plaintiff to a “strong presumption” that the trademark is protectable. 15 U.S.C. §§ 1057(b), 1115(a); Zobmondo Entertainment, LLC, 602 F.3d at 1113-14.

The central element of trademark infringement is the “likelihood of confusion” and the “issue can be recast as the determination of whether the similarity of the marks is likely to confuse customers about the source of the products.” GoTo.com, Inc., 202 F.3d at 1205 (citations and quotation marks omitted). In evaluating the likelihood of confusion between related goods or services, the following factors (referred to as the Sleekcraft factors) are considered: (1) strength of the mark, (2) proximity or the goods or services, (3) similarity of the marks, (4) evidence of actual confusion, (5) the marketing channels used, (6) the type of goods or services and the degree of care likely to be exercised by the purchasers of the defendant’s product, (7) defendant’s intent in selecting the mark, and (8) the likelihood of expansion of the product lines. AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir. 1979). However, the Sleekcraft factors are non-exhaustive, and should be applied flexibly, particularly in the context of Internet commerce. Network Automation v. Advanced Systems Concepts, No. 10-55840, 2011 WL 815806 (9th Cir. Mar. 8, 2011).

Under 15 U.S.C. § 1117(a), when a defendant acts willfully in its infringement of another’s trademark, the Court may award up to treble damages to the plaintiff if it finds that lost profits are inadequate. Taco Cabana Int’l Inc. v. Two Pesos, Inc., 932 F.2d 1113, 1127 (5th Cir. 1991). Finally, the court may award reasonable attorneys’ fees and costs if it determines that the trademark infringement case is “exceptional” under 15 U.S.C. § 1117(a).