CHAPTER 9 - § 9.02

• Jurisdiction: United States

§ 9.02 ENFORCING TRADE DRESS THROUGH LITIGATION

Where trade dress is registered, a plaintiff must prove that a defendant's use of goods or services in interstate commerce is likely to cause consumer confusion.¹¹² For unregistered trade dress, a plaintiff must prove that (1) its trade dress is valid and protectable (i.e., the trade dress is distinctive and non-functional); and (2) there is a likelihood of confusion between the plaintiff's trade dress and the defendant's product or services.¹¹³

Section 43 of the Lanham Act specifically requires a plaintiff attempting to enforce unregistered trade dress to show that the trade dress in question is non-functional.¹¹⁴ In addition to actions for likelihood of confusion, section 43 also authorizes actions for dilution of famous marks. In cases of dilution, the plaintiff must prove both fame and non-functionality.¹¹⁵

Practice Tip: Distinctiveness and non-functionality must be proven either during the registration process before the USPTO, or in litigation. It is often in the trade dress owner's best interest to present this evidence to the USPTO during a registration proceeding rather than waiting for litigation. The reason for this strategy is twofold. First, district court judges are often not as conversant with trade dress issues as the USPTO examiners, and this may impact the ability to obtain protection. Second, by waiting for litigation you give the opposing side the opportunity to argue against protection of the trade dress, an opportunity they would not have during the registration process. (Third parties do have opportunities to oppose and cancel trade dress applications and registrations, but only if they have knowledge of them.)

Likelihood of confusion is the ultimate test for trade dress infringement.¹¹⁶ The "likelihood of confusion" test determines whether an ordinary or reasonable consumer is likely to be deceived or confused by the similarity of two different parties' trade dress.¹¹⁷ This test is performed by comparing the overall appearance of the goods or services, not just individual features.¹¹⁸ Evidence of actual consumer confusion is not required but has been found probative of likelihood of confusion.¹¹⁹

Many factors may influence a court's decision for likelihood of confusion. The exact factors used to determine likelihood of confusion differ from circuit to circuit. The following is a listing of those factors in each circuit.

[1]—The Federal Circuit (The Dupont Factors)¹²⁰

1. The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression

2. The similarity or dissimilarity 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

3. The similarity or dissimilarity of established, likely-to-continue trade channels

4. The conditions under which and buyers to whom sales are made, i.e., "impulse" vs. careful, sophisticated purchasing

5. The fame of the prior mark (sales, advertising, length of use)

6. The number and nature of similar marks in use on similar goods

7. The nature and extent of any actual confusion

8. The length of time during and conditions under which there has been concurrent use without evidence of actual confusion

9. The variety of goods on which a mark is or is not used (house mark, "family" mark, product mark)

10. 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 goodwill of the related business

d. Laches and estoppel attributable to owner of prior mark and indicative of lack of confusion

11. The extent to which applicant has a right to exclude others from use of its mark on its goods

12. The extent of potential confusion, i.e., whether de minimis or substantial

13. Any other established fact probative of the effect of use¹²¹

[2]—The First Circuit (The Pignons Factors)¹²²

1. The similarity of the marks

2. The similarity of the goods

3. The relationship between the parties' channels of trade

4. The relationship between the parties' advertising

5. The classes of prospective purchasers

6. Evidence of actual confusion

7. The defendant's intent in adopting its mark

8. The strength of the plaintiff's mark¹²³

[3]—The Second Circuit (The Polaroid Factors)¹²⁴

1. The strength of the plaintiff's mark

2. The similarity of plaintiff's and defendant's marks

3. The competitive proximity of the products

4. The likelihood that the plaintiff will "bridge the gap" and offer a product like the defendant's

5. Actual confusion between products

6. Good faith on the defendant's part

7. The quality of the defendant's product

8. The sophistication of buyers¹²⁵

[4]—The Third Circuit (The Lapp Factors)¹²⁶

1. The degree of similarity between the owner's mark and the alleged infringing mark

2. The strength of the owner's mark

3. The price of the goods and other factors indicative of the care and attention expected of consumers when making a purchase

4. The length of time the defendant has used the mark without evidence of actual confusion

5. Intent

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