415.398.3141 iplaw@evoke.law

Overview: Likelihood of Confusion

Likelihood of consumer confusion is the touchstone of trademark law and determining whether there is infringement, which is the unauthorized use of a mark on or in connection with goods and/or services in a manner that is likely to cause confusion, deception, or mistake about the source or sponsorship of the goods and/or services. Whether there is a likelihood of confusion is assessed by considering a number of factors, which vary jurisdiction by jurisdiction. Below we discuss the factors evaluated by the Ninth Circuit: Similarity of the Marks: Confusion may arise primarily as a result of the mental associations conjured by the appearance of two marks, considering the marks in terms of sight, sound, and commercial meaning. Sight – the visual impression created by the mark as a whole. Consumers generally have imperfect memories and changing one or two letters in a mark generally will not avoid a likelihood of confusion. Further, where the mark is comprised of multiple terms, the dominant feature, often the most distinctive term of the mark, is entitled to more weight. Sound – the similarities in pronunciation. This is particularly important where brands are often verbally discussed. We note that the correct pronunciation is not the issue, but whether purchasers pronounce the word in the same or a similar manner. Meaning – the closeness of the commonly understood meaning or dictionary definitions of the marks. Strength of Mark: All trademarks are not created equal; some marks are more distinctive than others. Marks can be strong or weak. Made-up (fanciful) marks like Exxon® and Kodak®, and arbitrary marks, such as Apple®, are the strongest. Arbitrary...