Trademark infringement is the unauthorized use of a Trademark or Service Mark on or in connection with goods and/or services, in such a manner that makes it likely to cause a relevant consumer to be confused, deceived, or mistaken as to the source of the goods and/or services.
The test for likelihood of confusion is set forth in In re Application of E. I. Dupont Denemours & Co, 476 F.2d 1357, 1361 (C.C.P.A. 1973), in which the Court enunciated the factors relevant to determining likelihood of confusion as follows:
- The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression.
- The similarity or dissimilarity of and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use.
- The similarity or dissimilarity of established, likely-to-continue trade channels.
- The conditions under which and buyers to whom sales are made, i.e. “impulse” vs. careful, sophisticated purchasing.
- The fame of the prior mark (sales, advertising, length of use).
- The number and nature of similar marks in use on similar goods.
- The nature and extent of any actual confusion.
- The length of time during and conditions under which there has been concurrent use without evidence of actual confusion.
- The variety of goods on which a mark is or is not used (house mark, “family” mark, product mark).
- The market interface between applicant and the owner of a prior mark: (a) a mere “consent” to register or use. (b) agreement provisions designed to preclude confusion, i.e. limitations on continued use of the marks by each party. (c) assignment of mark, application, registration and good will of the related business. (d) laches and estoppel attributable to owner of prior mark and indicative of lack of confusion.
- The extent to which applicant has a right to exclude others from use of its mark on its goods.
- The extent of potential confusion, i.e., whether de minimis or substantial.
- Any other established fact probative of the “effect of use.”