CHAPTER 3 - § 3.07

• Jurisdiction: United States

§ 3.07 LIKELIHOOD OF CONFUSION PRIOR TO 1992

The "likelihood of confusion" analysis for trade dress was adapted from the existing analysis for trademarks and has not changed significantly as the profile of trade dress started to increase after Two Pesos.

Most courts held that likelihood of confusion was present when "customers viewing the mark ... [assumed] that the product or service it [represented was] associated with the source of a different product or service identified by a similar mark."¹⁵⁴ That is, a design or a product that "falsely [designated] its origin" weighed heavily in favor of likelihood of confusion.¹⁵⁵

There were several factors for determining whether likelihood of consumer confusion existed.¹⁵⁶ Depending on the case at hand, some of the factors were weighed more heavily than others.¹⁵⁷ The factors for consideration of likelihood of confusion included the following:

1) "strength of the plaintiff's trade dress"¹⁵⁸

2) "the degree of similarity in defendant's trade dress"¹⁵⁹
3) "the similarity of goods and services"¹⁶⁰

4) "evidence of actual confusion"¹⁶¹

5) "defendant's intent in selecting the particular trade dress"¹⁶²

6) "the degree of care exercised by the customers in the marketing region"¹⁶³

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Notes:

^[154] Fuddruckers, 826 F.2d 837 at 845 (citing Lindy Pen Co. v. Bic Pen Corp., 725 F.2d 1240, 1243 (9th Cir. 1984)).

^[155] Time, 712 F.Supp. 1103 at 1109 (citing LeSportsac, 754 F.2d at 75).

^[156] Schwinn Bicycle Co. v. Ross Bicycles, Inc., 10 U.S.P.Q.2d 1001, 1008 (7th Cir. 1989).

^[157] Id.

^[158] Keith Styrcula, Trade Dress Infringement of Business Establishment Design: A Survey of Case Law for Franchisors, 10 FRANCHISE L. J. 13, 15 (1990-1991); Fuddruckers, 826 F.2d 837 at 845 (citing Park 'N. Fly, Inc. v. Dollar Park and Fly, Inc., 782 F.2d 1508, 1509 (9th Cir. 1986); Time, 712 F.Supp. 1103 at 1109 (citing RJR Foods, Inc. v. White Rock Corp., 603 F.2d 1058, 1061 (2d Cir. 1979)).

^[159] Id.

^[160] Fuddruckers, 826 F.2d 837 at 846 (finding the similarity of marketing channels was sufficient to support a verdict for the plaintiff).

^[161] Id.

^[162] Id.

^[163] Id.